




2^V^ 



I 



INYENTOR'S lAKUAL 



LEGAL PEINCIPLES, 



GUIDE TO THE PATENT OFFICE. 



-BY QE0E6E TIOKNOE OUEHS, 

COTTNSEXLOit AT LITT. 



BOSTON: 

PHILLIPS, SAMPSON & COMPANY 

1851. 



Entered according to Act of Congress, in the year 1851, 

By George Ticknor Curtis, 

In the Clerk's Office of the District Court for the District of Massachusetts. 



X' 



^ 






O^ 



<3 



STEREOTYPED BP 
HOBABT & BOBBINS, 
ENGLAND TYPE AND STEREOTYPE FOUNDEKT, 
BOSTON, 



PREFACE. 



This little work has been abridged from, the author's 
larger Treatise on Patent Law, for the use of inventors. 
In the experience of ingenious men, engaged in prosecuting 
discoveries and inventions, there often occurs, in the first 
place, the interesting and important question, what consti- 
tutes a patentable invention ? This is a question, upon 
which, in many, if not in most cases, no inventor will do 
well to trust entirely to his own judgment, even for the 
preliminary purpose of an application to the Patent Office. 
But it must be a great aid to any inventor, in presenting to 
counsel in the first instance the nature of his discovery or 
invention, to have some knowledge of the general principles 
of that system of law whose protection he wishes to invoke. 
Such a general knowledge may save him many useless 
experiments, and will enable him to present the case, on 
which he wishes advice, clearly and intelligibly, and perhaps 
save him from the consequences of an infringement on the 
rights of others. It will also enable him to know what dili- 
gence he must use, in a case where he supposes himself to 
be in danger of rivalry from the simultaneous efforts of 
other persons. 

In regard, too, to the very important step of presenting to 
the Patent Office the claim on which he is to found his 
patent, every inventor, whether he undertakes to prepare his 



own specification, or prepares it under professional advice, 
will find himself assisted by some knowledge of the rules on 
which the safe and correct structure of that instrument 
depends. Such knowledge will not — or, at least, should not 
in important cases — lead him to trust solely to his own 
judgment for the application of those rules ; but it will be 
likely to guard him against the error oi proposing to include 
in his claim things which ought to be rejected, and will 
enable him to present to his adviser the real subject-matter 
of his invention, with reference to which the claim is to be 
drawn. 

Every person, also, who is interested, or proposes to 
become interested, in a patent right, needs to have at hand 
the means of ascertaining the modes and forms of transact- 
ing business at the Patent Office, and the Acts of Congress 
by which this whole subject is regulated : and these will be 
found in the following Manual. The great numbers of 
persons in the United States interested in these subjects, 
and the growing importance and extent of these interests, 
seemed to the author to render it desirable to present the 
general principles of the law in a condensed and accurate 
form, together with proper directions for making applications 
to the Patent Office, divested of the learning which can be 
useful only to members of the legal profession. The general 
diffusion of a correct knowledge of the leading principles of 
patent law, among practical inventors, may do something 
to promote their convenience, and the security of this species 
of property, which involves the interests of a very large class 
of persons throughout this country. 

Boston, May 1, 1851. 



PART I. 



THE SUBJECT-MATTER OF PATENTS, 



AND THE 



PARTIES ENTITLED THERETO. 



PART I. 

THE SUBJECT-MATTER OF PATENTS, AND THE PARTIES 
ENTITLED THERETO. 



CHAPTER I. 



NOVELTY AND UTILITY. 



§ 1. The Patent Act now in force in this country requires 
that the subject of every patent should be "new and useful," 
whether it be an art, machine, manufacture, or composition 
of matter, or an improvement on any of these things.^ The 
inquiry that meets every inventor on the threshold is, what 
constitutes novelty, and what constitutes .utility, in the sense 
of the statute ? 

^ 2. It is one of the first principles of patent law, that a 
patent cannot be obtained for a mere philosophical or abstract 
theory, be the subject what it may : it can only be for theory 
reduced to practice. If, therefore, the subject of the patent 
be an art, it must be an art actually put in practice and 
unknown before; — if it be a machine, it must be substan- 
tially new in its structure and mode of operation, and not 
merely changed in form or in the proportion of its parts : — 
if it be a manufacture, or composition of matter, it must be 
something actually made and substantially different from 
anything the making of which was before known. 

1 Act of July 4, 1836, c. 357, § 6. 



8 LAW OF PATENTS. 

§ 3. In machinery, if a patent is claimed for a whole 
machine, it must in substance be a new machine ; that is, it 
must be a new mode, method, or application of mechanism, 
to produce some new effect, or to produce an old effect in a 
new way. In cases of difficulty, where the machinery is 
complicated, and many of the elements employed are powers 
and instruments of motion long known, the test, which is to 
determine the boundaries between what was known and used 
before, and what is new, is, to observe what is new in the 
mode of operation. If the principles of a machine, that is, 
the peculiar device or manner of producing the given effect, 
be new, although the effect itself be old, a patent may be 
claimed for the machine. 

§ 4. On the other hand, the mere purpose or effect of a 
machine, however novel, can furnish no ground for a valid 
patent, unless the machine itself, the instrument by which 
the purpose is effected, is substantially new. The applica- 
tion of what is old to a new purpose is not patentable. 

^ 5. It is necessary, however, to consider somewhat in de- 
tail what amount of invention is essential to support a patent. 

<5> 6. It is often laid down, that, provided the invention is 
substantially new, it is of no consequence whether a great or 
small amount of thought, ingenuity, skill, labor, or experi- 
ment has been expended, or whether it was discovered by 
mere accident. Still it is sometimes necessary to ascertain 
what bearing the amount of thought, design, or ingenuity 
that may have been expended, has upon the question of 
novelty. It may not be necessary that there should be 
positive evidence of design, thought, or ingenuity; but if it 
is necessary that the possibility of these qualities having 
been exercised should not be excluded by the character of 
the supposed invention, then such possibility becomes one 
test of the sufficiency of invention. While the law does not 



NOVELTY AND UTILITY. 9 

look to the mental process by which the invention has been 
reached, but to the result, it may still require that the 
result should be such as not to exclude the possibility of 
some skill or ingenuity having been exercised. It requires 
this, because it requires that the subject-matter of a patent 
should be something that has not substantially existed before. 
While such a thing may have been produced by mere acci- 
dent, and not by design, yet it may also have been the fruit 
of design and study. If, however, the character of the 
alleged invention be such, that no design or study could by 
possibility have been exercised in its production, then its 
character is strong proof that it does not differ substantially 
from what had been produced before. We must look, there- 
fore, to the character and purposes of the invention, and not 
to the actual process by which it was produced, in order to 
see that the possibility of thought, design, ingenuity, or labor 
having been exercised, is not excluded. 

§ 7. Thus, if an alleged invention is absolutely frivolous 
and foolish, though it may have the element of novelty, in 
one sense, it is not the subject of a patent. So, too, mere 
colorable variations, or slight and unimportant changes, will 
not support a patent ; as the immersion of cloth in a steam 
bath, with the view of damping it, instead of immersing it in 
hot water ; and the substitution of steam as the means of 
heating hollow rollers over which wool was to be passed, 
instead of heating them by the insertion of hot iron bars. In 
such cases, if the consequences resulting from the change are 
unimportant, and the change consists merely in the employ- 
ment of an obvious substitute, the discovery and application 
of which could not have involved the exercise of the inventive 
faculty, in any considerable degree, then the change is treated 
as merely a colorable variation, or a double use, and not as a 
substantive invention. 

§ 8. On the other hand, the utility of the change, and 
the consequences resulting therefrom, may be such, as to 



10 LAW OF PATENTS. 

show that the inventive faculty may have been at work ; 
and in such cases, though, in point of fact, the change was 
the result of accident, its utility and importance will afford 
the requisite test of the amount of invention involved in 
the change. Thus the mere substitution of one metal for 
another, in a particular manufacture, might be the subject 
of a patent, if the new article were better, more useful, or 
cheaper than the old. In Crane's patent, the invention con- 
sisted in the use of anthracite and hot air-blast, in the manu- 
facture of iron, in the place of bituminous coal and hot air- 
blast ; and it was held that if the result produced by such a 
combination be either a new article, or a better article, or a 
cheaper article, to the public, than that produced before by 
the old method, that such a combination is an invention or 
manufacture intended by the statute, and may well become 
the subject of a patent. But if the change be immaterial 
and productive of no beneficial result, so that the end can 
be attained as well without as with the supposed improve- 
ment, it will not support a patent. 

^ 9. There are many cases where the materiality and 
novelty of the change can be judged of only by the effect 
on the result ; and this effect is tested by the actual im- 
provement in the process of producing the article, or in the 
article itself, introduced by the alleged invention. To these 
cases this test is directly applicable. Thus, in Lord Dud- 
ley's patent, the change consisted in the substitution of pit 
coal for charcoal in the manufacture of iron, and it was new 
both in the process of manufacture and in the constitution 
of the iron. In Neilson's patent, the change consisted in 
blowing the furnace with hot air instead of cold ; and in 
Crane's, the substitution of anthracite as fuel, in combina- 
tion with the hot blast. Both these processes were great 
improvements, leading to a cheaper production of iron of as 
good or a better quality. In Derosne's patent the invention 
was by the application of charcoal in the filtering of sugar, 



NOVELTY AND UTILITY. 11 

being a change in the process of manufacture, so as to pro- 
duce sugar in a way unknown before. In Hall's case, the 
use of the flame of gas, to singe off the superfluous fibres 
of lace, effected completely what had been done before in an 
imperfect manner. 

^ 10. In these cases the subject of each invention was 
not the particular machinery or apparatus by which the new 
application was to be made available, but it was the new 
application itself of certain known substances or agents, to 
produce a particular result, differing, either in the process or 
in the article produced, from the former methods of pro- 
ducing the same thing, and thereby producing a better 
article, or producing it by superior and cheaper processes. 
It is obvious that the result, in such cases, furnishes a com- 
plete test of the sufficiency of invention; because the im- 
portance of the result shows that whether actually exercised 
or not, the possibility of the exercise of thought, design, 
ingenuity, and skill is not excluded. The merit is the 
same, whether the invention was the fruit of accident or de- 
sign ; because the merit consists in having realized the idea 
and carried it out in practice. But if the idea and the prac- 
tice involve no beneficial results, superior to what had been 
before attained, there could have been no scope for the exer- 
cise of the inventive faculty, because the result excludes the 
supposition of its having been exercised. 

§ 11. The same test is also indirectly applicable to anoth- 
er class of cases, where a particular instrument or machine, 
or combination of machinery, is the subject of the patent. 
As in Arkwright's case, the gist of the objection was, that 
-the-alleged new machinery did not serve the purpose of 
spinning cotton better than the machinery formerly used. 
And wherever this objection lies to a particular machine or 
instrument,. there cannot be said to be a sufficiency of inven- 
tion to support a patent. In .the case of Brunton's patent, 



12 LAW OF PATENTS. 

which covered two inventions, the one was for an improve- 
ment in the construction of chain cables, and the other for 
an improvement in the construction of anchors. As to the 
first invention, chain cables had been formerly made with 
twisted links, a wrought-iron stay being fixed across the 
middle of the opening of each link to keep it from collapsing. 
The alleged improvement consisted in making the links 
with straight sides and circular ends, and in substituting a 
cast-iron stay with broad ends, adapted to the sides of the 
link, and embracing them. This combination of the link 
and the stay was calculated to sustain pressure better than 
the old form. The substitution of a broad-headed stay in 
the link, in place of a pointed stay, under the circumstances, 
was a sufficient invention to support a patent, on account of 
the utility of the substitution, in connection with the princi- 
ples to be carried out, viz., the resistance of pressure accord- 
ing to the action of forces. 

§ 12. In respect of the anchor, the invention consisted in 
making the two flukes in one, with such a thickness of metal 
in the middle that a hole might be pierced through it for 
the insertion of the shank, instead of joining the two flukes 
in two distinct pieces by welding to the shank. The hole 
was made conical or bell-mouthed, so that no strain could 
separate the flukes from the shank, by which means the 
injury to the iron, from repeated heating, was avoided, only 
one heating being necessary to unite the end of the shank 
perfectly with the side of the conical hole. But it appeared 
at the trial, that the improvement in the anchor was the 
avoiding the welding, by means well-known and practised 
in cases extremely similar. It was a case of the simple 
application of a mode known and practised for a similar 
purpose in other like cases ; and it did not appear that 
anchors so made were superior to those which had been 
made before. The patent, therefore, in respect of the 
anchor, could not be sustained. 



KOVELTY AND UTILITY. 13 

§ 13. In like manner, where the substance of an inven- 
tion consisted in spinning with a much less distance be- 
tween the retaining and drawing rollers, than had been 
before practised, the spinning at a particular distance did 
not constitute a new manufacture, it having been the pre- 
vious practice to spin at variable distances, 

^ 14. It appears, then, that the amount of invention may- 
be estimated from the result, although not capable of being 
directly estimated on a view of the invention itself. 

§ 15, The utility of the change is the test to be applied 
for this purpose. As there cannot be a decidedly useful 
new result, without some degree of invention in producing 
the change which effects that result, when a real utility is 
seen to exist, a sufficiency of invention may be presumed. 
And whenever utility is proved to exist in a very great de- 
gree, a sufficiency of invention to support a patent may be 
presumed. 

§ 16. These principles may now be applied to the statute. 
It requires that the subject of a patent should be " new and 
useful," The word " useful" is used for the purpose of es- 
tablishing general utility as the test of a sufficiency of in- 
vention to support a patent. It had been held, upon the use 
of the same word in the same connection in the old patent 
act of 179.3, that it was used merely in contradistinction to 
what is frivolous or mischievous to society. This term was 
held to be satisfied, if the alleged invention was capable of 
use, and was not injurious to the well-being, good policy, or 
sound morals of society. 

§ 17, But'the subject of a patent must not only be " use- 
ful," in this sense, that is, capable of use and not mischiev- 
ous, but it must also be a " new " art, machine, manufacture, 
or composition of matter, or " a new improvement " upon 
2 



14 LAW OF PATENTS. 

one of these things, " discovered or invented " b^r the paten- 
tee, and " not know^n or used by others " before. It is 
obvious, therefore, that the subject-matter of a patent must 
be something substantially different from anything that has 
been known or used before; and this substantial difference, 
in all cases where analogous or similar things have been 
previously known or used, must be the measure of a suf- 
ficiency of invention to support a patent. 

§ 18. In determining whether alleged inventions of 
various kinds possess the necessary element of novelty, the 
character of the result, and not the apparent amount of skill, 
ingenuity or thought exercised, is to be examined ; and if 
the result is substantially different from what had been 
effected before, the invention is entitled to a patent ; other- 
wise it is not. 

§ 19. Thus, where there was a patent for an improve- 
ment in copperplate printing of bank notes, by printing cop- 
perplate on both sides of the note, or copperplate on one 
side, and letter-press on the other, or letter-press on both 
sides, as an additional security against counterfeiting ; and 
other parties had used steel plate printing ; the question 
was, whether " copperplate printing " included " steel plate 
printing." It was contended, that even if copperplate did 
not include steel plate printing, still the use of the latter, 
applied to bank notes, to produce the effect stated in the 
patent, was a mere invasion and virtually an infringement. 
But it was held that if the use of steel plates was an ivi- 
promment upon printing from copperplates, for which a 
patent might have been obtained by the inventor, the use 
of steel plates could with no propriety be considered as an 
infringement of the patent, unless it appeared that the 
patentee's improvement had also been used. 

^ 20. In other words, if the process of printing by steel 



NOVELTY AND UTILITY. 15 

plates was an improvement in the manufacture of notes, 
upon the process of printing- by copperplates, so as to be a 
benefit to the trade of manufacturing notes, it would have 
been a substantive invention, and therefore not an infringe- 
ment upon the plaintiff's patent, if standing alone. 

§ 21. But where there was a patent for an alleged in- 
vention in folding and putting up thread and floss cotton, in 
a manner different from the ordinary mode, so that it would 
sell quicker and for a higher price than the same cotton 
put up in the common way; the article itself was import- 
ed, and underwent no change. The whole of the improve- 
ment consisted in putting up the slceins or hanks in a 
convenient quantity for retailing, with a sealed wrapper, 
and a label containing the number and description of the 
article. The invention, upon the patentee's own showing, 
was frivolous ; it was in no way beneficial to the public, not 
making the article itself any better, or altering its quality 
in any way. In other words, it was no " improvement of 
the trade " of making the article sold, but it was a mere 
improvement in the art of selling it, by which the retailer 
could get a higher price for the same article than could be 
obtained by putting it up without the label. 

§ 22. So, too, where the question was whether, in a pa- 
tent for a machine for making wool cards, the patentee had 
not claimed what had been substantially done before, his 
claim being for the whole machine, which comprehended 
several distinct operations or stages in the manufacture ; 
the question was, whether either of these effects had been 
produced in the machines formerly in use by a combination 
of machinery or mode of operation substantially the same 
as in the machine of the patentee. It would not be suf- 
ficient to protect the plaintiff's patent — it being for the 
whole machine — that his specific machine, with all its 
various combinations and effects, did not exist before ; he^ 



16 LAW OF PATENTS. 

cause, if the different effects embraced in it were all produced 
by the same application of machinery, in separate parts, and 
he merely combined them, or added a new effect, such com- 
bination would not sustain his patent for the whole machine ; 
that is to say, without looking at the apparent amount of 
skill or invention involved in bringing these several modes 
of operation into one machine, which was not the invention 
claimed, if the result accomplished thereby did not differ 
substantially, in respect to the processes embraced in it, 
from what had been done before in separate machines, the 
subject-matter claimed as the invention v^as not new. 

§ 23. On the Other hand, where a patent claimed, as the 
invention of the party, a new and useful improvement in 
the making of friction matches, by means of a new com- 
pound, and it was said that the ingredients had been used 
before in the making of matches, the true question was, 
whether the materials had been used before in the same 
combination, and if not, the combination was patentable, 
however apparently simple it might be. That is to say, if 
the result at which the inventor had arrived, the production 
of a friction match by a particular combination of materials, 
was new, there was a sufficiency of invention, without look- 
ing at the apparent facility or difficulty of accomplish- 



§ 24. But where an invention was claimed to be a mode 
by which the back of a rocking-chair could be reclined and 
fixed at any angle required, by means of a certain appara- 
tus, the patent was declared void, because the same appara- 
tus or machinery had been long in use, and applied, if not 
to chairs, at least in other machines, to purposes of a simi- 
lar nature. An examination of the result attained by the 
plaintiff show^ed that he had accomplished nothing which 
had not been done before, but had merely applied an old 
contrivance to a new purpose. 



NOVELTY AND ITTILITY. 17 

^ 25. This last case furnishes a clear line of demarkation 
between invention and a mere application to a new use. 
It shows that the end, effect or result attained must be new ; 
and that if the same end, effect or result has been attained 
before, it is not new, and there has been no invention, but 
merely an application of means before known to produce an 
effect before known, on a new occasion. The purpose itself, 
which is to be accomplished, is not patentable ; but the 
adaptation of materials to the execution of the purpose, or 
the apparatus by which the purpose is accomplished, is the 
true subject of the patent ; and if the same purpose has in 
other instances been accomplished by the same means, the 
use of those means on a new occasion does not constitute a 
sufficiency of invention. In other words, the machinery, 
apparatus, or other means, is not new. 

^ 26. The doctrine in relation to utility, being, in this 
country, that the subject-matter of a patent must not be 
injurious or mischievous to society, or frivolous or insignifi- 
cant ; it follows that every invention, for which a patent is 
claimed, must be, to a certain extent, beneficial to the com 
munity ; it must be capable of use, for some beneficial pur 
pose ; but when this is the case, the degree of utility, 
whether larger or smaller, is not a subject for consideration, 
in determining whether the invention will support a patent 
But it is obvious that the capability of use for some bene 
ficial purpose is a material element, in determining whether 
there is a sufficiency of invention to support a patent ; the 
force of the word " useful," introduced into the statute in 
connection with the epithet "new," being to determine 
whether the subject-matter, upon the whole, is capable of 
use, for a purpose from which any advantage can be derived 
to the public. General rules will not decide this question 
in particular cases, but the circumstances of each case must 
be carefully examined, under the light of the principles on 
which general rules are founded. 
2* 



18 LAW OF PATENTS. 

§ 27. In connection with the subject of novelty, it is 
further to be renuembered, that the statute also requires that 
the subject-matter of a patent should not have been " known 
or used by others before the discovery or invention thereof " 
by the patentee. 

§ 28, The time of the knowledge or use of an invention 
by others which is to vitiate a patent, is a very important 
point. In England, such knowledge, obtained at any time 
and in any mode, before the application for a patent, is 
sufficient to invalidate it. But in this country, it was set- 
tled as the true construction of the act of 1793, which used 
the words, " not known or used before the application," 
that these words, taken in connection with other provisions 
of the statute, meant that the invention should not have 
been known or used before the discovery by the patentee. 
This construction was afterwards adopted by Congress in the 
act of 1836, in so many terms. 

^ 29. The word " others," though used in the plural in 
this statute, was used to denote that the use should be by 
some other person or persons than the patentee ; and there- 
fore the prior use by one person other than the patentee is 
sufficient to show that the patentee was not the first inven- 
tor. 

^ 30. The expression " first inventor," as used in our 
statute, means that the patentee must have been the inven- 
tor first in point of time before all others. The English 
law is somewhat different from ours, on this point, for 
although it is requisite in England that the patentee should 
be the first inventor, yet the courts have so construed the 
expression, as to admit of a valid patent in a variety of 
cases, where the patentee was not absolutely the first person 
to make or discover the thing ; as where it had been made 
previously, by another person who had concealed it from 



NOVELTY AND UTILITY. 19 

every one else ; and generally, in England, the question 
whether the patentee is the true and first inventor or not, 
depends on whether he borrowed the invention from a source 
open to the public. But in this country, these distinctions 
are rejected ; and it is held, under our statutes, that the 
patentee must have been the first inventor, as against all 
other persons, whether they have made known their inven- 
tions or not. The previous knowledge and actual applica- 
tion of the thing by any one person, however privately, is 
sufficient to defeat the patent. 

^ 31. We have already se n that there are two issues 
with respect to novelty ; one, whether the patentee is the first 
inventor ; the other, whether the invention, at the time of 
his application, be new as to public use and exercise. 
These issues may be involved together, because, if the last 
is negatived, it may be negatived by evidence which shows 
that the patentee v/as not the first inventor. But in point 
of law and fact, these are distinct issues. The patentee 
may have been the first inventor, and yet he may have 
allowed the invention to get into public use and exercise, 
before his application ; or the invention may never have 
been in public use, and yet the patentee may not be the 
first inventor, by reason of his having learned it from some 
one else, or from some published work, or from some other 
source open to the public. 

§ 32. It is an important question of construction, there- 
fore, to determine when a claimant is the first inventor, in 
the sense of the statute. This depends upon the nature and 
extent of the knowledge which any other person may have 
had of the subject of the patent. 

§ 33. It is not sufficient to defeat a patent, already issued, 
that another person has conceived the possibility of efiecting 
what the patentee has actually accomplished. To consti- 



20 LAW OF PATENTS. 

tute a prior invention, the party alleged to have made h 
must have proceeded so far as to have entitled himself to a 
patent, in case he had made an application ; or, in othei 
words, he must have reduced his idea to practice, and em- 
bodied it in some distinct form. It is true, that in a race of 
diligence between two independent inventors, our law pro- 
vides for the priority of conception, by allowing the one who 
first invents to obtain the patent, if he was using reasonable 
diligence in adapting and perfecting his invention, although 
a second inventor has, in fact, first perfected the invention, 
and reduced it to practice. But where a patent has been 
granted to a patentee, who did not surreptitiously obtain his 
knowledge from a prior inventor, who was using reasonable 
diligence to perfect and adapt the invention, in order to defeat 
it on the ground that the patentee was not the first inventor, 
some previous inventor must not only have had the idea, but 
must also have carried the idea into practical operation ; for 
he is entitled to a patent, who, being an original inventor, 
has first perfected and adapted the invention to actual use. 

^ 34. But when may a prior invention be said to have 
been perfected and adapted to actual use ? Does the law 
furnish any test by which this question can be answered ? 
In the first place, it is clear, that mere trials and experi- 
ments, though continued up to the date of a patent, will 
not vitiate the grant, if the patentee had no knowledge of 
those trials and experiments ; because the first perfected in- 
vention, if original, is entitled to the patent. In the second 
place, there may often be a very satisfactory test, which will 
determine whether the proceedings of an alleged prior in- 
ventor were anything more than trials and experiments, by 
ascertaining whether he at any time, before the date of the 
patent, abandoned the pursuit of the object at which he was 
aiming. If he did so, the abandonment has been said to 
furnish a presumption that his proceedings rested in experi- 
ment and trial alone. 



NOVELTY AND UTILITY. 21 

§ 35. But if, on the contrary, his experiments and trials 
were continued, or if there is not satisfactory evidence of an 
abandonment of the object, then it becomes a question of 
fact, depending on the nature of the proposed invention, the 
character of the experiments and the results attained, to de- 
termine whether the party had really accomplislied the same 
substantial result as that described in the patent. 

§ 36. But although the subject of every patent must have 
been " invented or discovered " by the party claiming to be 
the inventor or discoverer, still, as suggestions and hints 
may often have been made use of by a man of the most 
original genius, in the production of inventions, it becomes 
necessary to inquire who is to be regarded as the inventor 
or discoverer, in the sense of being entitled to a patent for 
the thing invented or discovered. 

§ 37. The intellectual production, or that which, when 
perfected, constitutes the thing invented, differing from all 
other things by some substantial peculiarity which gives it 
a distinct character, is what the law means to protect with 
an exclusive privilege. It is clear, therefore, that many sug- 
gestions may have been made, or many hints taken from 
others, without invalidating the claim of a party to be con- 
sidered as the author of the invention : since it is not the 
abstract suggestion or inchoate idea, which the law intends 
to treat as the subject of the patent, but the perfected inven- 
tion, in which the idea is applied to a practical purpose and 
made capable of useful operation. There may be a long 
interval between the first suggestion of an idea, which leads 
to or forms the germ of a discovery, and the actual produc- 
tion of that discovery, in all its peculiarities, constituting in 
its perfect state the thing invented. This interval must, in 
many cases, be occupied by the exercise of inventive power, 
of the highest description, on the part of him who has 
talijen the first suggestion from another, by bringing it to 



22 LAW OF PATENTS. 

perfection, or developing" and reducing it to practical appli" 
cation ; and the extent to which this interval is so occupied 
will determine whether the person originally suggesting, o7 
the person subsequently applying an idea, is entitled to be 
regarded as the inventor. 

§ 3S. Thus it has been held that in order to invalidate a 
patent, on the ground that the patentee received from another 
person the suggestion of the invention, it is not enough to 
show that the naked idea, or bare possibility of accomplish- 
ing the object, was suggested. On the other hand, it is net 
necessary that the minutiae of the invention should have 
been communicated by another person. But it mast appear 
that the invention was substantially communicated to the 
patentee, so that without more inventive power he could 
have applied it in practice. So, too, it has been held, that 
although others may have previously had the idea of a 
machine and made some experiments towards putting it in 
practice, the person who first brought the machine to per- 
fection, and made it capable of useful operation, is the 
inventor, and is entitled to the patent. 

^ 39. The extent to which a person may avail himself of 
the suggestions, or inventive faculties, or manual dexterity 
of a servant, and afterwards claim to be the inventor, does 
not perhaps admit of being stated in any precise general 
proposition. It depends upon the relative situations of the 
parties, the nature of the employment, and the fact of the 
employer having planned or conceived the main idea of the 
invention. The person who suggests the principle of an 
invention is the inventor; and if this be the servant, the 
employer cannot claim the invention as the author of it, 
although he may have taken the servant into his employ 
for the express purpose. But if the employer conceives 
the result embraced in the invention, or the general idea of 
a machine upon a particular principle, and, in order to carry 



NOVELTY AND UTILITY. 23 

kis conception into effect, it is necessary to employ manual 
dexterity, or even inventive skill, in the mechanical details 
and arrangements requisite for carrying out the original 
conception, in such cases the employer w^ill be the inventor, 
and the servant will be a mere instrument, through which 
he realizes his idea. The adoption by an inventor, of a 
suggestion made in the course of experiments, of something 
calculated more easily to carry his conceptions into effect, 
does not effect the validity of the patent. 

^ 40. There may be a class of cases, where the patentee, 
having employed and paid for the inventive faculty of an- 
other, may claim and hold a patent for the invention, not as 
the inventor, but as the assignee of the inventor. But this 
class of cases belongs to the subject of assignments of 
patents, and is distinguishable from the general principles 
which determine who is the actual inventor. 

^ 41. With regard to the use of the antecedent experi- 
ments of others, the rule of law is, that experiment not 
brought to completion, or conducted to a full result, will not 
vitiate the patent of a more successful person in the same 
line, though he avails himself of the knowledge gained by 
the experiments of his predecessors. 

^ 42. The Statute of 1836 also requires that the subject 
of the patent should not have been, at the time of the appli- 
cation, in public use or on sale, with the consent or allowance 
of the patentee, as the inventor or discoverer. 

§ 43. The phrase "public use "means use in public, and 
not use by the public ; so that, under this act, if there had 
been a use in public by any person, with the consent or 
allowance of the patentee, the patent will be defeated. 

§ 44. But then it is necessary that the machine or other 
subject of invention should have been completed, and should 



24 LAW OF PATENTS. 

have been used in public substantially as it was patented, 
with the consent of the patentee. 

§ 45. As the law stood, therefore, prior to the year 1839, 
an invention might be allowed to be in public use, by the 
patentee, before his application, in two modes. He might 
allow of its use in public by an individual, or individuals, or 
he might allow the whole public to use it, by having aban- 
doned, or dedicated his invention to the public, before his 
application. In either case, his patent would have been void, 

§ 46. With regard to the first mode, where the use had 
been permitted to an individual, it has been held that such 
use must have been unlimited in time, extent, or object. If 
allowed for a short, or definite period, as an act of kindness, 
or as a means of continuing experiments and testing the 
utility of the invention, it would not have the effect of defeat- 
ing the patent under the act of 1836. 

§ 47. With regard to the second mode, a dedication or 
abandonment of the invention to the public, before the appli- 
cation for a patent, it has been said that the circumstances 
ought to be very clear and cogent, before the court would be 
justified in adopting a conclusion so subversive of private 
rights, when the party has subsequently taken out a patent. 
Still, although the inventor's acts are to be construed liber- 
ally, unequivocal evidence that he has dedicated his inven- 
tion to the public will deprive him of his right. 

§ 48. Prior to the year 1839, therefore, if the patentee 
allowed not merely the public use, but even a free individual 
use, of his invention, before he applied for a patent, his patent 
would be invalid. But by the act of 1839, ch. 88, ^ 7, this 
inconvenience was remedied by the enactment, "that every 
person or corporation who has, or shall have, purchased or 
constructed any newly invented machine, manufacture or 



NOVELTY AND UTILITY. 35 

composition of matter, prior to the application by the inventor 
or discoverer for a patent, shall be held to possess the right 
to use, and vend to others to be used, the specific machine, 
manufacture or composition of matter, so made or purchased, 
without liability therefor to the inventor, or any other person, 
interested in such invention ; and no patent shall be held to 
be invalid by reason of such purchase, sale or use, prior to 
the application for a patent aforesaid, except on proof of 
abandonment of such invention to the public ; or that such 
purchase, sale or prior use, has been for more than two years 
prior to such application for a patent." 

^ 49. This enactment relieved the patentee from the 
effect of the former laws, and the construction that bad been 
put upon them by the courts, and put the person, who, by 
the consent and allowance of the inventor, had had a prior 
use of the invention, on the same footing, as if he had a 
special license from the inventor to use his invention ; and, 
at the same time, the patent is valid, after it is issued, 
against all persons, except such licensee, who will continue 
to have the right to use the invention. Inv^entors may now, 
therefore, permit the use of their inventions, by individuals, 
for a period of two years, prior to the application for a patent, 
and still obtain a valid patent, notwithstanding such use. 
But if the use thus allowed extends over a period of more 
than two years prior to the application, or if it amounts to 
an abandonment of an invention to the public, whether for a 
longer or a shorter period, the patent will be invalid. 

§ 50. But to entitle a person to claim the benefit of this 
statute, he must be a person who is a purchaser, or who has 
used the patented invention before the patent was issued, by 
a license or grant, or by the consent of the inventor, and not 
be a purchaser under a mere wrong-doer. What will 
amount to such a license, grant or consent, is well shown ia 
a case where a person employed in the manufactory of 
3 



26 LAW OF PATENTS. 

another, while receiving wages, made experiments at the 
expense and in the manufactory of his employer, had his 
wages increased in consequence of the 'useful result of the 
experiment, made the article invented, and permitted his 
employer to use it, no compensation for its use being paid 
or demanded, and then obtained a patent; it was held, that 
such an unmolested and notorious use of the invention, prior 
to the application for a patent, brought the case within the 
provisions of the statute. 

§ 51. But the further consideration of the subjects of 
license and abandonment belongs to another part of this 
treatise. 

§ 52. The novelty required by our law relates not merely 
to previous inventions made in this country, but to inventions 
made anywhere in the world. The invention must be abso- 
lutely and not relatively new. It must not have been known 
or used anywhere, and not described in any public work. 

^ 53. But there is an important proviso, introduced into 
the statute, which declares that whenever it shall satisfac- 
torily appear that the patentee, at the time of making his 
application for the patent, believed himself to be the first 
inventor or discoverer of the thing patented, the same shall 
not be held to be void on account of the invention or dis- 
covery, or any part thereof, having been before known or 
used in any foreign country, it not appearing that the same, 
or any substantial part thereof, had before been patented 
or described in any printed publication. So that, as the law 
now stands, an inventor who does not borrow from a foreign 
discovery, that is, who believes himself to be the first 
inventor or discoverer of the thing patented, can only be 
deprived of the benefit of his patent, by showing that the 
thing had been before patented, or described in some printed 
publication. It will not be enough to show that the thing 



NOVELTY AND UTILITY. 27 

had been known or used in a foreig-n country, if it had not 
been patented, or described in a printed publication. 

§ 54. Thus, while the recent statute still continues the 
presumption that the patentee has seen the prior description 
contained in a printed publication, and makes that presump- 
tion conclusive, it relieves an original inventor from the 
same presumption, arising out of the mere previous knowl- 
edge or use of the thing in a foreign country where it had 
not been patented or described ; and if he can take the oath 
that he discovered or invented the thing, he will not be 
debarred of his patent, by a prior invention or discovery and 
secret use of the thing in a foreign country. 

§ 55. It remains to be stated, that the consideration upon 
which a patent is granted, is the novelty of every material 
thing, process, or part of the invention, included in the sub- 
ject-matter, that is represented as a substantial and material 
part thereof; that this consideration is an entirety, and, 
consequently, that if any part of it fails, the patent is invalid. 
This consequence results from the general principles of law 
which govern grants by the public, and these principles are 
recognized by the statute, which establishes as one of the 
defences to an action on a patent, " that the patentee was not 
the original and first inventor or discoverer of the thing 
patented, or of a substantial and material part thereof 
claimed as new." 

§ 56. So, also, in respect of utility, if a patent contains 
more than is necessary to produce the described effect, and 
the addition was made for the purpose of deceiving the 
public, it will be invalid ; and if the whole patent fails to 
produce the described effect, no action can be maintained 
upon it. 



CHAPTER II. 

THE SUBJECT OF INVENTION OR BISCOVERY. 

^ 57. The Act of Congress of July 4, 1836, ch. 357, § 6, 
declares the subject of letters-patent to be " any new and 
useful art, machine, manufacture or composition of matter, 
or any new and useful improvement on any art, machine, 
manufacture, or composition of matter." In the preceding 
chapter, we have considered the qualifications of novelty and 
utility, with reference to all these subjects; and we have 
now to treat of the several subjects themselves. 

§ 5S. The cardinal principle, which lies at the foundation 
of the patent law, in this and most other countries, is, that 
whatever be the character of the subject-matter, or the way 
in which it is described, the result must be an effect produced 
in manufactured, as distinguished from elementary matter. 
The subject-matter of a patent may be either a thing pro- 
duced or the mode of produchig a thing; but it must be the 
one or the other, and can never be a new discovery of an 
elementary principle, without practical application to the 
production of some particular effect in matter. This funda- 
mental rule is deducible not only from the meaning of the 
term " manufacture," which cannot be made to mean any- 
thing that does not result in manufactured matter in some 
way — but also from the general scope and spirit of the 
patent law, which was not designed to create monopolies in 
abstract principles or theoretical discoveries, but to promote 
the arts and manufactures of the country. 

§ 59. According to the construction of the courts, the 
word manufacture is used in the statute in a literal and a 



StJBJECT OF INVENTION OR DISCOVERY. 29 

figurative sense. It is used in a literal sense, because it 
clearly includes any species of new manufactured article, or 
tangible product of industry ; or a new machine, the con- 
struction or production of which, as an arrangement of 
matter, is the result at which the inventor aims. But when 
it is extended to include the mode of producing an old or 
well known substance, or an old and well known effect upon 
matter, by a new method or process, it seems to be used in 
a sort of figurative sense ; because, in such cases, it is the 
method or process of producing the thing or the efTect that 
is new, and is the real subject of the invention, and the manu- 
facture, or the result attained in matter, is then made to stand 
in the place of the new method or process of attaining it. 

§ 60. Thus, " manufacture " has been defined to be " some- 
thing made by the hand of man;" and it has also been held 
to include the practice of making a thing, or of producing a 
result : as in Watt's patent for " a method of lessening the 
consumption of steam and fuel in fire engines," which was 
held, after great consideration, to be a good subject-matter. 
The distinction to which this case gave rise, and which 
greatly extended the meaning of the term " manufacture,'' 
is this : that although a principle, or a rule in mechanics, 
or an elementary truth in physics, cannot be the subject of a 
patent, yet a new principle, rule, or truth, developed, carried 
out and embodied in the mode of using it, may be the sub- 
ject of a patent. A mere principle is an abstract discovery, 
incapable of answering the term "manufacture;" but a 
principle so far embodied and connected with corporeal sub- 
stancesj as to be in a condition to act and to produce effects 
in any art, trade, mystery or manual occupation, becomes 
the practical manner of doing a particular thing. It is no 
longer a principle, but a process. Mr. Watt's invention was 
the discovery of a practical means of lessening the consump- 
tion of steam, by protecting the cylinder from the external 
air, and keeping it at a temperature not below that of steam 
3* 



30 LAW OF PATENTS. 

itself. He tlius brought a principle into practical application, 
by the invention of a process. 

§ 61. In like manner, a patent for the application of the 
flame of gas, instead of the flame of oil, to remove the 
superfluous fibres of lace, was sustained. So, too, where the 
invention consisted in the use and application of lime and 
mine-rubbish in the smelting of iron, it was held that there 
might be a patent for a new combination of materials pre- 
viously in use for the same purpose, or for a new method of 
applying such materials. But this distinction has been made 
still more prominent by two recent cases. In one, the patent 
was for the application of anthracite combined with hot air 
blast in the smelting or manufacture of iron from iron stone, 
mine or ore ; and the patent was sustained. In the other, 
the invention was of a mode of welding iron tubes, without 
the use of a maundril, or any internal support; and this 
patent was also sustained. 

§ 62. These cases show that the term manufacture has 
been extended to include every object upon which art or skill 
can be exercised, so as to afford products fabricated by the 
hand of man, or by the labor which he directs. In this sense 
it includes a process : so that a patent may, it is said, be 
taken for a process, method, or practical application of a 
principle, that will cover every means or apparatus by which 
that process or method can be carried on, or by which that 
principle can be applied, provided the patentee has not only 
discovered the principle, but has also invented some mode 
of carrying it into effect. 

§ 63. But it is necessary here to consider the broad 
question, what constitutes a patentable subject, before we 
attend to the classification of patentable subjects adopted by 
our statute. 



SUBJECT OF INVENTION OR DISCOVERY. 31 

§ 64. It is constantly to be borne in mind, in considering 
what may be the subject of a valid patent, that it cannot be 
a mere elementary principle, or intellectual discovery ; but 
if a principle constitutes an important part of the discovery, 
it must be a principle put in practice and applied to some 
art. A science, therefore, or an elementary principle or 
discovery in science, cannot be the subject of a patent. So, 
too, there cannot be a patent for an effect, but it must be for 
the mode or means by which the effect is produced ; or the 
practical mode of operating, by means of certain agencies or 
properties of matter, or laws of physics, so as to produce a 
given effect. 

§ 65. The consequences of allowing a patent for an 
abstract art or a principle, instead of allowing it only for a 
principle as applied to the production of a particular thing, 
or a particular result in matter, are apparent, when it is 
considered that principles are the elements of science, and 
if a patent could be taken for a newly-discovered principle 
in science, it would cover every object to which that principle 
could be applied, and the whole field of the arts would thus 
at once be occupied by a few monopolists. If a patent for 
an art or method of combining different elements or princi- 
ples in science were possible, without its being confined to a 
particular product or result by means of such an art or 
method, every product, substance, or manufacture, to the 
creation of which that art or method could be applied, would 
be included in it. The distinction is this : — if a discovery 
consists merely in detecting some new property of matter, 
or of Ihe elements of nature, or the laws of physics, but no 
special and positive application is made of it to specific 
fabrications, it is a discovery in science, or abstract mechanics, 
and not patentable ; but if the discoverer makes use of such 
a new property, or avails himself of scientific or mechanical 
principles, for the production of a new substance, instrument, 
or machine, obtaining a result that is new, and of a vendible 



^ LAW OP PATENTS, 

description, the particular mode of producing that particular 
thing may be the subject of a patent. 

^ 66. Although a patent cannot be taken out for a new- 
principle, yet, where it has been embodied, so as to be 
capable of being made active, it is, as we have seen, a proper 
subject of a patent ; and if any other person puts that prin- 
ciple into use, in any other form, it is a question for a jury, 
whether that form be not substantially an adaptation of the 
principle, applied with the same view to answer the same 
end, and merely imitated in substance, whatever difference 
there may be in point of form. If the patentee has invented 
some mode of carrying the principle into effect, he is en- 
titled, it is said, to protect himself from all other modes of 
carrying the same principle into effect. In point of fact, the 
patent in such cases is taken, not for the principle itself, but 
for the mode of carrying into effect; so that when it is 
alleged that an infringement has taken place, the question is 
whether the defendant has undertaken to carry the same 
principles into effect in the same mode, so that, in substance, 
all the variations of means and appliances which he has 
made use of are merely colorable variations of the mode of 
carrying it into effect invented by the patentee. The pa- 
tentee is entitled to protection against all colorable varia- 
tions for carrying the same principle into practice for obtain- 
ing the same effect or result. 

§ 67. Thus, there may be a patent for the practical 
application of a known thing to produce a particular effect : 
as in the case of Hartley's invention to protect buildings 
from fire, by the application of plates of metal. So, too, in 
the case of Forsyth's patent, for the application of detonating 
powder, which he did not invent, to the discharge of artil- 
lery, mines, &c., the patentee succeeded in an action against 
a party using a lock of different construction to any shown 
in the drawing annexed to his specification, and thus estab- 



SUBJECT OF INVENTION OR DISCOVERY. 33 

lished his right to the exclusive use and application of 
detonating powder as priming, whatever the construction of 
the lock by which it was discharged. In the same way, 
where the plaintiff had obtained a patent for the application 
of the flame of gas to singe off the superfluous fibres of lace 
and other goods, but did not claim the exclusive use of any 
apparatus or combination of machinery, except in connection 
with, and in aid of, the application of the flame of gas to the 
purposes described in his specification, he had a verdict 
founded on his sole right to use gas flame for the clearing 
of fibres from lace. So, also, where the invention consisted 
in the use of anthracite or stone coal, combined with the 
hot air-blast, in the smelting or manufacture of iron from 
iron stone, mine or ore ; and the using of the hot blast was 
known before in the manufacture of iron with hituminous 
coal, and the use of anthracite or stone coal was known 
before in the manufacture of iron with cold blast, but the 
combination of the hot blast and the anthracite was not 
known before in the manufacture of iron, it was decided;, 
that if the result produced by such a combination is either a 
new aiticle or a better article, or a cheaper article to the 
public, than that produced before by the old method, such 
combination is an invention or manufacture intended by the 
statute, and may well become the subject of a patent. 
Again, where the invention was to manufacture iron tubes 
by welding them without the use of any maundril or inter- 
nal, support, but the patentee did not claim any precise 
construction of apparatus for this purpose, but his claim 
consisted in heating the previously prepared tubes of iron to 
a welding heat, and then, without any internal support, 
drawing them between dies or holes, by which the edges of 
the heated iron became pressed and welded together ; and 
the defendant had made tubes upon the same principle of 
manufacture, but with a somewhat varied apparatus ; the 
patentee had a verdict for the infringement. 



34 LAW OF PATENTS. 

^ 68. And where the invention consisted in the applica- 
tion of heated air as a blast for fires, forges, and furnaces, 
but the patentee claimed no particular form of apparatus for 
heating the air, but described an apparatus by which it 
might be heated ; and the defendant had employed an 
apparatus confessedly superior in its effects to that described 
in the plaintiff's specification, and such an improvement as 
would have supported a patent ; but as it involved the prin- 
ciple of the plaintiff's invention it was held an infringement. 

§ 69. In cases of this class, where the most important 
part and merit of the invention consists in the conception of 
the original idea, rather than in the manner in which it is 
to be carried out, or applied in practice, it is clear that a 
principle carried into practice by some means, constitutes 
the subject-matter of the patent. Inventions of this class 
may have a character totally independent of the particular 
means by which they are applied, although the patentee 
must have applied the invention by some means ; and when 
he has done so, the imitating that character may be a piracy 
of that invention, although the means may be very different, 
and such as in themselves might constitute a distinct or 
substantial invention. The machinery employed is not of 
the essence of the invention, but incidental to it. In cases 
like the foregoing, however, although machinery, apparatus, 
or other arrangement of matter is not of the essence of the 
invention, still it is of some importance. But there is 
another class of cases, where the application of a principle 
is still more distinctly seen to constitute the subject-matter 
of the invention, because it requires no peculiar and sub- 
stantive machinery or apparatus, or composition of matter, 
to give it application. 

4 70. In these cases, the subject-matter of the invention is 
an application and adaptation of a natural or known agent, 
or a known substance, or thing, to produce a given effect. 



SUBJECT OF INVENTION OR DISCOVERY. SB 

As in Daniell's patent for improvements in dressing wool- 
len cloth, the invention consisted in immersing cloth, manu- 
factured in the usual manner, in hot water; and in Fusell's 
patent the cloth was subjected to a steam bath with the 
same object. In Christ's patent for "improvements in cop- 
per and other plate printing," the substance of the invention 
was in the preparation of the paper, and the particular 
means by which this was effected was by " putting a glazed 
enamelled surface on the paper by means of white lead and 
size, whereby the finer lines of the engraving are better 
exhibited than heretofore." So, too, the omission of any 
ingredient previously used in and considered essential to a 
particular process or manufacture, constitutes such a change 
in the series of processes pursued, as to be a new manu- 
facture. As where a patent was taken for " a new and im- 
proved method of making and manufacturing double canvass 
and sail cloth with hemp and flax, or either of them, with- 
out any starch whatever;" and where another invention, 
for rendering cloth fabrics water-proof, consisted in immers- 
ing them in various solutions in a different order from that 
which had been previously followed, although the same 
solutions had been previously used. 

^ 71. It appears, then, that there is a large class of cases, 
where improvements or inventions in the mode of producing 
a particular known effect will be the subject-matter of let- 
ters-patent ; and another large class of cases, in which the 
discovery and application of new means of producing an 
effect before unknown, will also be the subject-matter of a 
patent. One of these classes embraces all cases of the new 
application of known agents and things, so as to lead to a 
change in the series of processes by which the particular effect, 
result, or manufacture is produced, or by which an entirely 
. new effect, result, or manufacture is produced. The other 
embraces all cases of the discovery and application of new 



06 LAW OF PATENTS. 

agents or things, by which a new effect or result is to be 
produced. 

§ 72. In determining whether an alleged invention or 
discovery is such as will support a patent, the question must 
•often arise, what is meant by the application of a principle ? 
And this question involves two inquiries : first, how must 
the principle be made use of; and, secondly, what must be 
the result produced ? 

§ 73. It has already been stated, that the embodiment of 
a principle, so that it may be in a condition to act and to 
produce an effect, may be the subject of a patent. There is, 
in other words, a distinction between the principle that is so 
embodied, and the principle of such embodiment; the former 
is a truth of exact science, or a law of matter, or a rule of 
practice ; while the latter is the practice founded on such 
truth, law, or rule. 

^ 74. This practice consists in the application of the 
principle. But it is not every application of the principle, 
or every occasion on which the principle can be applied, that 
can be the subject of a patent. The principle may have 
been discovered and applied before, and when this is the 
case, the new application may be only what is described in 
patent law as a " double use," which cannot be the subject 
of a patent. In such cases, there may be in the new appli- 
cation some degree of novelty ; something may have been 
discovered, or found out, that was not known before, but 
unless the new occasion on which the principle is applied 
leads to some kind of new manufacture, or to some new 
result, it is only a double use of that which was known 
before. 

^ 75. Illustrations of this distinction may be seen in the 
application of well known medicines, drugs, and chemical 



SUBJECT OF INVENTION OR DISCOVEUY. 37 

substances upon new occasions, or for new specific purposes, 
If it is discovered that a medicine, known and used as a 
valuable remedy in one class of diseases, has also great 
efficiency in curing another and different disease, there is a 
new application of a known thing, but it is only a double 
use of that thing. 

§ 76. In order to escape the objection of a double use, it 
is necessary that the new occasion or purpose to which the 
«se of a known thing is applied should not be merely 
analogous to the former occasions or purposes to which the 
same thing has been applied. There is a very material 
distinction between applying a new contrivance to an old 
object, and an old contrivance to a new object. The former 
may be patentable, but the latter cannot be, when the new 
•object is merely one of a class possessing a common 
analogy. Thus, where a certain description of wheels had 
been used on other carriages than railway carriages, it was 
held that the plaintiff could not claim a patent merely for 
the use of such wheels upon railway carriages; and where 
a patent claimed as the invention of the patentee a process 
of curling palm leaf for mattresses, but it appearing that 
hair had long been prepared by the same process for the 
same purpose, it was decided to be a mere double use of an 
old process. 

§ 77. When, therefore, the principle is well known, or 
the application consists in the use of a known thing to pro- 
duce a particular effect, the question will arise, whether the 
effect is of itself entirely new, or whether the occasion only 
upon which the particular effect is produced is new. If the 
occasion only is new, then the use to which the thing is 
applied is simply analogous to what had been done before. 
But if the effect itself is new, then there are no known analo- 
gous uses of the same thing, and the process may constitute 
such an art as will be the subject of a patent. Thus, the 
4 



38 LAW OF PATENTS, 

use of scissors to cut one substance produces a particular 
effect, entirely analogous to that produced when they are 
used to cut another substance ; the effect, therefore, is not 
new. But the use of gas to singe off the superfluous fibres 
of lace, was the use of an agent for a purpose not analogous 
to any other purpose for which the same agent had ever 
been used before; and, therefore, the effect, as produced by 
that agent, was new. Great discrimination, however, is to 
be used, in determining whether the analogy is such as to 
justify the inference that the occasion only is new, and that 
the effect is not new. Of course, if any new contrivances, 
combinations, or arrangements are made use of, although 
the principal agents employed are well known, those con- 
trivances, combinations, or arrangements, may constitute a 
new principle, and then the application or practice will 
necessarily be new also. But where there is no novelty in 
the preparation or arrangement of the agent employed, and 
the novelty professedly consists in the application of that 
agent, being a well-known thing ; or, in other terms, where 
it consists in the practice only, the novelty of that practice 
is to be determined, according to the circumstances, by 
applying the test of whether the result or effect produced 
is a new result or effect, never before produced. If a nev/ 
manufacture is produced, or if an old manufacture is produced 
by new means, then the result or effect is new, as produced 
by that particular means, and the new case is such as can 
be protected by letters-patent. But if only an old manufac- 
ture is produced, or an old result is attained, by means 
analogous to what the same means have produced when 
applied the same way in other cases, the new occasion of 
using those means does not constitute a case that can be 
protected by a patent. 

§ 78. The statute having undertaken to classify the sub- 
jects of patents under four general heads, we may here state 
what is supposed to be embraced in each of them. 



SUBJECT OF INVENTION OR DISCOVEEY. 3d 

§ 79. I. An Art. The first subject of a patent men- 
tioned in the statute is "any new and useful art," or "any 
new and useful improvement of an art." This term embraces 
the useful as distinsTiished from the fine arts. It applies 
to all those cases, where the application of a principle is 
the most important part of the invention, and where the 
machinery, apparatus, or other means by which the princi- 
ple is applied, is incidental only, and not of the essence of 
the invention. It applies also to all those cases, where the 
result, effect, or manufactured article is old, but the inven- 
tion consists in a new process or method of producing such 
result, effect, or manufacture. But where machinery or 
apparatus of any kind is the chief subject of invention, or 
where the result, effect, or article produced is new, the sub- 
ject of the patent will fall under one or the other of the 
classes designated in the statute as " machine," " manu- 
facture," or " composition of matter," according to its prin- 
cipal characteristics and objects. 

§ 80. A case which occurred many years ago, furnishes 
an illustration of an " art," as the subject of a patent. The 
plaintiff alleged himself to be the inventor of a new and 
useful improvement in the printing of bank notes, which was 
said to furnish an additional security against counterfeiting. 
The invention, as summed up in his specification, was " to 
print copperplate on both sides of the note or bill; or cop- 
perplate on one side, and letter-press on the other ; or letter- 
press on both sides of a bank note or bill, as an additional 
security against counterfeiting." The art of printing with 
both letter-press and copperplate was not the invention of 
the plaintiff. He made use of old materials and processes, 
in a new manner, for the purpose of producing a new effect, 
namely, a new security against counterfeiting. His patent, 
therefore, was for the new application of the process of print- 
ing by copperplate and letter-press, by printing on both sides 



40 LAW OF PATENTS. 

of the note ; and this new application was held by the court 
to be an art within the terms of the statute. 

§ 81. Another illustration is presented by a patent for a 
mode of casting iron rollers or cylinders, so that when the 
metal was introduced into the mould, it should receive a 
rotatory motion, by which the dross would be thrown into- 
the centre instead of upon the surface of the cylinder. This 
was effected solely by changing the direction of the tube 
which conveyed the metal to the mould, from a horizontal 
or perpendicular position to a direction approaching a tangent 
of the cylinder. 

§ 82. n. A Machine. A machine, to be the subject of a 
patent, must be a particular construction of mechanism, 
containing the improved method of producing an old effect,, 
or the method of producing a new effect. If the subject of 
the invention or discovery is not a mere function, but a 
function embodied in some particular mechanism whose 
mode of operation and general structure are pointed out, and 
which is designed to accomplish a particular purpose, func- 
tion, or effect, it virill be a machine, in the sense of the patenfe 
law. A machine is rightfully the subject of a patent, when 
well-known effects are produced by machinery entirely new 
in all its combinations, or when a new or an old effect is 
produced by mechanism, of which the principle or mode of 
operation is new. The word "machine," in the statute,, 
includes new combinations of machines, as well as new 
organizations of mechanism for a single purpose. There 
may be a patent for a new combination of machines to pro- 
duce certain effects, whether the machines constituting the 
combination be new or old. In such cases, the thing 
patented is not the separate machines, but the combination^ 
A single instance of such a combination is presented by the 
telescope, in which a convex and concave glass of different 
refracting powers are combined to make the object-glass;. 



SUBJECT OF INVENTION OR DISCOVERY. 41 

What constitutes a claim for a combination only, and what 
will be a claim for the specific parts of a machine, as well as 
for the combination, is a question of construction on the 
patent and specification, the rules for which will be stated 
hereafter. But it is proper here to state the general princi- 
ples applicable to combinations as the subject-matter. 

^ 83. Where the invention consists of several distinct and 
independent improvements in the same machine, a patent 
may be taken for them in the aggregate, and such a patent 
will protect each of the improvements. But when the patent 
is for a new combination of existing machinery or machines, 
and does not specify or claim any improvements or inven- 
tions, except the combination, the subject-matter of the 
patent -will be the combination alone, and the making of the 
separate machines will not be an infringement of it. 

§ 84. The statute also makes a new and useful " improve- 
ment" of a machine the subject of a patent. A patent for 
the improvement of a machine is the same thing as a patent 
for an improved machine. Improvement, applied to ma- 
chinery, is where a specific machine already exists, and an 
addition or alteration is made, to produce the same efl^ects 
in a better manner, or some new combinations are added, to 
produce new effects. In such cases, the patent can only be 
for the improvement, or new combination. The great ques- 
tion, of course, when an alleged invention purports to be an 
improvement of an existing machine, is to ascertain whether 
it be a real and material improvement, or only a change of 
form. In such cases, it is necessary to ascertain, with as much 
accuracy as the nature of such inquiries admits, the boun- 
daries between what was known and used before, and what 
is new, in the mode of operation. The inquiry, therefore, 
must be, not whether the same elements of motion, or the 
same component parts, are used, but whether the given effect 
is produced substantially by the same mode of operation, 
4# 



42 M.V7 or PATENTS. 

and the same combination of powers, in both machines ; or 
whether some new element, combination, or feature has been 
added to the old machine, which produces either the same 
effect in a cheaper or more expeditious manner, or an 
entirely new effect, or an effect that is in some material 
respect superior, though in other respects similar, to that 
produced by the old machine. 

§ 85. This inquiry will therefore often involve the ques- 
tion, whether the alleged improved machine operates upon 
the same principle as the former machine ; or, in other terms, 
whether it produces the same effect by the same mechanical 
means, or by means which are substantially the same. One 
machine may employ the same mechanical power in the 
same way as another machine, though the external mechan- 
ism may be apparently different. At the same time a 
machine may have an external resemblance to another, and 
yet may operate upon a different principle. It is, therefore, 
necessary, where the effect is the same, to determine whether 
the mode of operation, the peculiar device or manner of 
producing the effect, is substantially the same. Where the 
effect is different, the test of a sufficient " improvement " to 
sustain a patent will be the character and importance of the 
effect itself. 

^ 86. There may be a patent for an improvement of a 
machine that is itself the subject of an existing patent. A 
patent including the subject-matter of a patent still in force, 
is valid, if the improvement only is claimed in the specifica- 
tion. In such cases, the new patent will come into force, 
after the expiration of the old one, or it may be applied by 
using a license under the former patent, or by purchasing the 
specific machine which the former patent covers, before the 
expiration of the latter. 

§ 87. In an action for an infringement of a patent pro- 
fessing to be an improvement on a former patent, the speci- 



SUBJECT OF mVENTION OR DISCOVERT. 43 

fication of that former patent must be read. But it is not 
material whether a machine, made according to that specifi- 
cation of the first patent, would be useful or not, if it be 
shown that a machine, constructed according to the subse- 
quent patent, is useful. 

^ 8S. In all cases of alleged improvements in machinery, 
the test of sufficiency is, whether there is anything material 
and new, that will be an improvement of the trade. 

^ 89. III. A Manufacture. The term "manufacture" 
embraces, in the English law, machinery, as well as sub- 
stances or fabrics produced by art and industry. Oar stat- 
ute, however, having made an enumeration of the different 
classes of subjects which are patentable, it is to be presumed 
that this term was used to describe one of these classes only, 
namely, fabrics or substances made by the art or industry 
of man, not being machinery. It may sometimes require a 
nice discrimination, to determine whether one of these 
classes does not run into the other, in a given case ; as, for 
instance, when a tool or instrument of a novel or improved 
construction is produced, to be used in connection with 
other machinery, or to be used separately. As an article of 
merchandise, found and sold separately in the market, such 
a production would be a manufacture ; but, regarded with 
reference to its use and intended adaptation, it might be 
considered as a machine, or part of a machine. In deter- 
mining, in such cases, how the patent for the article should 
be claimed, it would probably be correct to range it under 
the one or the other of these classes, according to the 
following test. If the article is produced and intended to 
be sold and used separately, as a merchantable commodity, 
and the merit of it, as an invention, consists in its being a 
better article than had been before known, or in its being 
produced by a cheaper process, than it may properly be 
considered simply as a manufacture. But if its merit ap- 
pears only after its incorporation with some mechanism with 



44 LAW OF PATENTS. 

which it is to be used, and consists in producing, when com- 
bined with such mechanism, a new effect, then it should be 
regarded as a machine, or an improvement of an existing 
machine. These distinctions, however, are not vitally im- 
portant to be taken in the patent itself, since it is not neces- 
sary to the validity of a patent, that the thing should be 
described with entire accuracy as " a machine " or " a 
manufacture." If the thing itself is correctly described, and 
it appears to be novel and useful, and unites all the other 
requisites of the statute, it may be left to general interpreta- 
tion to determine, whether the subject-matter ranges itself 
under the one or the other of these classes, or whether it 
partakes of the characteristics of both. But if the subject- 
matter be neither a machine, nor a manufacture, or compo- 
sition of matter, then it must be an art. There can be no 
valid patent, except it be for a thing made, or for the art or 
process of making a thing. 

^ 90. IV. A Composition of Matter. The last class 
of patentable subjects mentioned in the statute is described 
by the term " composition of matter." It includes medi- 
cines, compositions used in the arts, and other combinations 
of substances intended to be sold separately. In such cases, 
the subject-matter of the patent may be either the com- 
position itself, the article produced, or it may be the mode or 
process of compounding it. Generally speaking, the patent 
covers both, because, if the composition is itself new, the 
process by which it is made must also be new, and the law 
will protect both as the subjects of invention. But if the 
article itself be not new, but the patentee has discovered 
merely a new mode or process of producing it, then his 
patent will not be for a new " composition of matter," but 
for a new " art " of making that particular thing. 

^ 91. With regard to this class of subjects, it is sufficient 
to observe, that the test of novelty must, of course, be, not 



SUBJECT OF INVENTION OR DISCOVERY. 45 

whether the materials of which the composition is made, are 
new, but whether the combination is new. Although the 
ingredients may have been in the most extensive and com- 
mon use, for the purpose of producing a similar composition, 
if the composition made by the patentee is the result of 
different proportions of the same ingredients, or of the same 
and other ingredients, the patent will be good. The paten- 
tee is not confined to the use of the same precise ingredients 
in making his compound, provided all the different combi- 
nations of which he makes use are equally new. 

"s> 92. A new class of objects has, by a recent statute, 
been made the subjects of letters-patent. These are new 
and original Designs for a manufacture of metal and other 
materials ; for the printing of woollen, silk, cotton, or other 
fabrics ; for busts, statues or bas-relief, or composition in 
alto or basso-relievo ; for any impression or ornament, or to 
be placed on any article of manufacture in marble or other 
material ; for any new and useful pattern, print or picture, 
to be in any manner attached to, or fixed on, any article of 
manufacture ; for any new or original shape or configuration 
of any article of manufacture ; all such designs not being 
previously known or used by others. Patents for these 
subjects are to be issued on the like application and proceed- 
ings as those prescribed in other cases of patents, for the 
term of seven years, and on payment of one half the fee 
required by the general patent act. 

^ 93. The patents thus granted relate to the forms im- 
pressed upon the material constituting particular articles of 
manufacture, and to the marks adopted by tradesmen, 
whether patterns, prints or pictures, to distinguish their own 
manufactures. They thus occupy a kind of middle ground 
hetween copyrights and patents, as patents for useful inven- 
tions have hitherto been classed. Indeed, the exclusive 
light to impress upon matter a particular form, or to affix a 



46 LAW OF PATENTS. 

particular device to a bale of merchandise, is very closely 
analogous to the exclusive right to print a particular book 
or engraving, if it is not precisely the same right. The 
same general principles, at least, must be resorted to, to 
determine the identity between two forms of matter, as 
forms, or between two devices, as devices, which determine 
the identity of two books or engravings. The leading 
principle, in such comparisons, is that which shows that the 
one thing is a colorable imitation of another, when there is 
not an exact resemblance ; and although this principle has 
its place in that system of patent law which is applied to 
machinery, arts, manufactures or compositions of matter, it 
is more fully developed and of more frequent application in 
the law of copyright, as applied to books and engravings. 



CHAPTER III. 

UNITY OF THE SUBJECT-MATTEK. 

^ 94. The several Acts of Congress on the subject of 
Patents, evidently require that the subject-matter of a 
patent should be one invention or discovery. The act of 
1836, c. 357, ^ 6, speaks of an invention or discovery as the 
subject of a patent, and not of inventions or discoveries ; 
and, throughout this and the subsequent statutes, the subject- 
matter is always described or referred to in the singular and 
not in the plural. It is, therefore, an important inquiry, 
how far several distinct things can be made the subject of 
one patent. 

§ 95. In the first place, it is manifest that where there 
are two distinct and independent inventions, which have no 
necessary connection with each other, but which are appli- 
cable to different objects and purposes, they cannot be united 
in one patent ; for the statute affords no warrant for in- 
cluding more than one subject-matter in one patent. In the 
second place, if two distinct subject-matters could be included 
in one patent, great inconvenience and confusion would 
arise, both to the patentee and the public, from the applica- 
tion of the rule of law which renders void the whole patent, 
where a part of the subject-matter turns out not to be 
original. Still, these positions do not determine when sev- 
eral apparently distinct objects constitute one subject-matter; 
or whether there is any leading principle which will enable 
us to draw the line between one collection of objects as con- 
stituting one subject-matter, and another collection of objects 
as constituting more than one subject-matter. 



43 LAW OF PATENTS. 

§ 96. The object which, the inventor proposes to accom- 
plish will always be the main guide, by which to determine 
whether his subject-matter is a unit or not. It may consist 
of several distinct inventions, or several machines capable of 
useful operation separately ; but if the inventor has brought 
them together for a purpose which can only be effected by 
their union, that purpose indicates the true character of the 
subject-matter, when they are included in one patent, which 
goes for the accomplishment of that purpose. But if the 
patent goes for the combination, or the purpose to be effected, 
by the several inventions united in one operation, and also 
goes for the distinct purposes which each invention is, by 
itself, capable of effecting, it is clear that several subject- 
matters are embraced in one patent. 

§ 97. If, indeed, the patentee describes several distinct 
and independent parts of an invention, which are intended to 
be used in combination, and he is the first and original 
inventor of each of them, his patent will cover all the parts 
as well as the combination, and the use of any one of them 
by another person will be an infringement. But where the 
patentee is not the inventor of the several things used in the 
combination, but the combination itself is the true subject- 
matter of his patent, then the use of any number of those 
things, not amounting to the same combination, is no in- 
fringement. 

^ 98. It has also been held that a patent may be taken 
for several improvements on one and the same machine, or 
for two machines, which are invented by the patentee, and. 
conduce to the same common purpose and object, although 
they are capable of a distinct use and application, writhout 
being united together. But a patent cannot be taken for 
two distinct machines not conducing to the same common 
purpose or object, but designed, for totally distinct and 
independent objects. Hence, it would seem to follow that 



TJNITY OF THE SUBJECT-MATTER. 49 

where a patentee has invented two distinct and different 
machines, each of which will accomplish the same end, he 
may unite them in one patent, as being distinct modes by 
which he contemplates the application of his invention, one 
of them being preferable in certain circumstances to the 
other, and vice versa. In this way, the unity of the subject- 
matter is preserved ; for the subject-matter consists, in such 
a case, of the object to be accomplished, and of the several 
modes by which it may be accomplished. 

^ 99. There is also another aspect in which what we have 
called the unity of a patent must be preserved. It is 
impossible that any invention should have been produced 
both as the separate invention of a party, and as the joint 
invention of the same party and another or others. It 
must have been either the separate and sole invention of the 
party, or the joint invention of the same party, acting with 
others. A joint invention may be a good subject-matter of 
a patent, for the statute supposes the case of a joint inven- 
tion and provides for it. But if an invention, which, in 
point of fact, was made by more than one person, is made 
the subject of a patent by any one of them, he cannot take 
the oath required by the statute, declaring himself to be the 
original and first inventor, or, if he does take it, his patent 
will be void. On the other hand, if his invention was the 
sole production of one party, a joint patent for it encounters 
the same objection. It is necessary, therefore, in all cases, 
that the subject-matter should be claimed as the sole inven- 
tion of one party, if such is the fact, or as the joint invention 
of two or more parties, if it was invented by more than one. 

^ 100. An inventor cannot have two subsisting valid 
patents, at the same time, for the same invention. The 
first patent, while it remains in full force and unrepealed, is 
an estoppel to any subsequent patent by the same person for 
the same invention. 
5 



CHAPTER IV. 

THE PERSONS ENTITLED TO TAKE, RENEW, OR EXTEND PATENTS. 

§ 101. We have seen that the person or persons entitled 
to receive a patent can only be the inventor or inventors of 
the thing proposed to be patented. The statute does not 
admit of a patent for the introduction of an invention from 
abroad, however meritorious. The patentee must be the 
inventor, and the original and first inventor. But where the 
inventor has died before making application for a patent, the 
statute provides that the right of applying for and obtain- 
ing a patent shall devolve on his executor or administrator, 
in trust for his heirs or devisee, and that the oath or affirma- 
tion of original invention shall be varied accordingly. 

^ 102. As the statute is silent on the subject of citizen- 
ship, it follows that an alien, who is the first and original 
inventor of any patentable subject, may apply for and obtain 
a patent, in the same manner as a citizen of the United 
States. The eighth section of the Act of 1836, c. 357, 
seems to contemplate the case of an application by an alien, 
by providing that the fact of a patent having been previously 
taken out in a foreign country, shall not debar the original 
and true inventor from a patent in the United States, where 
such foreign patent has not been taken out, and the inven- 
tion published more than six months next before the filing 
of the specification and drawing. The subsequent Act of 
1839, c. 88, ^ 6, has somewhat altered this provision, by 
declaring that no person shall be debarred from receiving a 
patent by reason of the invention having been patented in a 
foreign country more than six months prior to his applica- 
tion, provided that the same shall not have been introduced 



EXTENSION OF PATENTS. 51 

into public and common use, in the United States, prior to 
the application for such patent. 

§ 103. So that, under these two statutes, the rights of 
aliens are these. An alien who is the original and first 
inventor of a patentable subject, may obtain a patent there- 
for in the United States, under the same circumstances as a 
citizen, if he has not patented his invention in a foreign 
country. If, however, he has taken out a patent for his 
invention and published the same abroad, if he applies for a 
patent in the United States, he can obtain it, provided the 
subject has not been introduced into public and common use 
in the United States, before his application, notwithstanding 
he may have received a patent for it abroad more than six 
months prior to his application here. But if his application 
in the United States is made within six months of the date 
or publication of his foreign patent, and yet the subject has 
in the mean time been introduced into public and common 
use in this country, it is not quite clear whether the statutes, 
taken together, mean to give him a patent, notwithstanding 
such public use, or whether they leave his case open to the 
general objection of a prior public use. It would seem to 
have been the intention of Congress, in these provisions, to 
leave the space of six months open to foreigners, where they 
are original and true inventors, and not to exclude them by 
reason of the introduction of their inventions within that 
period, commencing from the date of the patent or publica- 
tion in a foreign country. 

§ 104. The eighteenth section of the Act of 1836 pTovides 
for an extension of a patent beyond the term of its limita- 
tion, on the application of the patentee, in the mode therein 
prescribed. It has been determined, that an administrator 
is competent to apply for and receive this grant, although 
the patentee had disposed of all his interest in the then 
existing patent. 



52 LAW OF PATENTS. 

^ 105. The question whether an assignee under the first 
term of the patent can claim or exercise any right or interest 
under the renewed patent, has been much discussed ; but it 
has been finally determined by a majority of the Supreme 
Court of the United States, that the extension does not 
enure to the benefit of assignees under the original patent, 
but to the benefit of the administrator, when granted to an 
administrator, in his capacity as such ; but that assignees, 
who were in the use of the patented machine at the time of 
the renewal, have still a right to use it, though not to make 
and sell it. 

§ 106, It was also held, in the same case, that a covenant 
by the patentee, made prior to the law authorizing exten- 
sions, that the covenantee should have the benefit of any 
improvement in the machinery, or alteration, or renewal of 
the patent, did not include the extension by an administra- 
tor, under the act of 1836 ; but that it must be construed to 
include only renewals obtained upon the surrender of a 
patent on account of a defective specification. 



PAET II 



PROCEEDINGS TO OBTAIN, RENEW, 



EXTEND A PATENT. 



5* 



PART II. 

PROCEEDINGS TO OBTAIN, RENEW, OR EXTEND A PATENT 



CHAPTER I. 



THE SPECIFICATION. 



§ 107. Having ascertained the kinds of subjects for which 
letters-patent maybe obtained, and the parties entitled to 
take, renew, or extend them, we have now to state the pro- 
ceedings requisite to the issuing, renewal, and extension of 
patents, and the principles which govern their construction. 
As the first step to be taken, in making application for a 
patent, is to prepare a written description of the invention or 
discovery, the requisites of this instrument, called the speci- 
fication, and the rules for its construction, will first engage 
our attention. 

§ 108. The Act of Congress of July 4th, 1836, c. 357, ^ 6, 
contains the following enactment : 

" But before any inventor shall receive a patent for any 
such new invention or discovery, he shall deliver a written 
description of his invention or discovery, and of the manner 
and process of making, constructing, using and compounding 
the same, in such full, clear, and exact terms, avoiding 
unnecessary prolixity, as to enable any person skilled in the 
art or science to which it appertains, or with which it is 
most nearly connected, to make, construct, compound, and 
use the same ; and, in case of any machine, he shall fully 



56 LAW OF PATENTS. 

explain the principle and the several modes in which he has 
contemplated the application of that principle or character 
by which it may be distinguished from other inventions ; 
and shall particularly specify and point out the part, im- 
provement, or combination, which he claims as his own 
invention or discovery. He shall, furthermore, accompany 
the whole with a drawing or drawings, and written refer- 
ences, where the nature of the case admits of drawings, or 
with specimens of ingredients, and of the composition of 
matter, sufficient in quantity for the purpose of experiment, 
where the invention or discovery is of a composition of 
matter; which descriptions and drawings, signed by the 
inventor and attested by two witnesses, shall be filed in the 
patent office ; and he shall, moreover, furnish a model of his 
invention, in all cases wdiich admit of a representation by 
model, of a convenient size to exhibit advantageously its 
several parts." 

§ 109. The specification, under the law, occupies a rela- 
tion to the patent somewhat different from the rule in 
England, In England, the specification does not form part 
of the patent, so as to control its construction ; but the rights 
of the inventor are made to depend on the description of his 
invention, inserted in the title of the patent, and cannot be 
helped by the specification, the office of which is to describe 
the mode of constructing, using, or compounding the inven- 
tion mentioned in the patent. But in the United States, the 
specification is drawn up and filed before the patent is granted, 
and is referred to in the patent itself, a copy being annexed. 
It is, therefore, the settled rule in this country that the patent 
and the specification are to be construed together, in order 
to ascertain the subject-matter of the invention, and that the 
specification may control the generality of the terms of the 
patent, of which it forms a part. In like manner, drawings 
annexed to a specification, in compliance with the statute, 
are held to form a part of it, and are to be regarded in the 



THE SPECIFICATION. 57 

construction of the whole instrument. Where the term 
patent, therefore, is used, in the following discussion of the 
rules of construction, it will be understood to include the 
specification and drawings annexed to it. 

§ 110. In construing patents, it is the province of the 
court to determine what it is that is intended to be patented, 
and whether the patent is valid in point of law. Whether 
the invention itself be specifically described with reasonable 
certainty is a question of law upon the construction of the 
terms of the patent ; so that it is for the court to determine 
whether the invention is so vague and incomprehensible as 
in point of law not to be patentable, whether it is a claim 
for an improved machine, for a combination, or a single 
invention ; and, in short, to determine what the subject- 
matter is, upon the whole face of the specification and the 
accompanying drawings. It is, therefore, the duty of the 
jury to take the construction of the patent from the court, 
absolutely, where there are no terms of art made use of 
which require to be explained by evidence, and no surround- 
ing circumstances to be ascertained as matter of fact, before 
a construction can be put upon the instrument. But where 
terms of art requiring explanation are made use of, or where 
the surrounding circumstances affect the meaning of the 
specification, these terms and circumstances are necessarily 
referred to the jury, who must take the construction from 
the court, conditionally, and determine it according as they 
find the facts thus put to them. 

§ 111. It is, on the other hand, the province of the jury 
to decide, on the evidence of experts, whether the invention 
is described in such full, clear, and exact terms, as to enable 
a skilful person to put it in practice, from the specification 
itself. As specifications are drawn by persons more con- 
versant with the subject than juries, who are selected indis- 
criminately from the public, and as they are addressed to 



58 LAW OF PATENTS. 

competent workmen, familiar with the science or branch of 
industry to which the subject belongs, the evidence of those 
persons must be resorted to, who are able to tell the jury- 
that they see enough on the face of the specification to 
enable them to make the article, or reproduce the subject of 
the patent, without difficulty. 

^ 112. The rule of our law that the specification may 
control the generality of the terms of the patent is subject to 
this qualification. If there is a clear repugnancy between 
the description of the invention as given in the specification, 
and the invention stated in the letters-patent, the patent will 
be void ; for if the letters are issued for an invention that is 
not described in the specification, the statute is not complied 
with. The rule which allows the letters-patent to be con- 
trolled by the specification cannot extend to a case where the 
terms of the former are inconsistent with those of the latter. 

§ 113. The general rule for the construction of patents, in 
this country, is, that they are to be construed liberally, and 
not to be subjected to a rigid interpretation. The nature 
and extent of the invention claimed by the patentee is the 
thing to be ascertained ; and this is to be arrived at, through 
the fair sense of the words which he has employed to describe 
his invention. 

§ 114. But, at the same time, it is to be observed, that 
the statute prescribes certain requisites for this description 
of an invention, which are of long standing ; and the decis- 
ions of the courts, explaining and enforcing these requisites, 
have established certain rules of construction, intended to 
guard the public against defective or insufficient descriptions, 
on the one hand, and to guard inventors, on the other hand, 
against the acuteness and ingenuity and captious objections 
of rivals and pirates. The foundation of all these rules of 
construction is to be found in the object of the specification, 
which may be thus stated. 



THE SPECIFICATION. 59 

§ 115. The specification has two objects : one is to make 
known the manner of constructing the machine, (if the 
invention is of a machine,) so as to enable artisans to make 
and use it, and thus to give the public the full benefit of the 
discovery after the expiration of the patent. The other 
object of the specification is, to put the public in possession 
of what the party claims as his own invention, so as to 
ascertain if he claim anything that is in common use, or is 
already known, and to guard against prejudice or injury 
from the use of an invention which the party may otherwise 
innocently suppose not to be patented. It is, therefore, for 
the purpose of warning an innocent purchaser, or other per- 
son using a machine, of his infringement of the patent ; and 
at the same time of taking from the inventor the means of 
practising upon the credulity or the fears of other persons, 
by pretending that his invention is more than what it really 
is, or different from its ostensible objects, that the patentee 
is required to distinguish his invention in his specification. 

§ 116. It has been justly remarked, by a learned writer, 
that the statute requisites for a good specification run so 
much into each other, in their nature and character, and are 
so blended together, that it is difficult to treat of them 
separately. But the leading purposes of the whole of the 
statute directions are two : first, to inform the public what 
the thing is of which the patentee claims to be the inventor, 
and therefore the exclusive proprietor during the existence 
of his patent ; second, to enable the public, from the specifi- 
cation itself, to practise the invention thus described, after 
the expiration of the patent. 

'5> 117. I. The first rule for preparing a specification is, 
To describe the subject-matter, or what the patentee claims 

to ham invented, so as to enable the public to know what his 

claim is. 

Whether the patentee has done this, in a given case, is, as 



60 LAW OF PATENTS. 

we have seen, generally a question of law for the court, on 
the construction of the patent. It is not necessary that the 
language employed should be technical, or scientifically 
accurate, although at the same time it must not mislead. 
If the terms made use of will enable the court to ascertain 
clearly, by fair interpretation, what the party intends to 
claim, an inaccuracy or imperfection in the language will 
not vitiate the specification. But it must appear with rea- 
sonable certainty what the party intends to claim ; for it is 
not to be left to minute references and conjectures, as to what 
was previously known or unknown ; since the question is 
not wrhat was before known, but what the patentee claims 
as new. If the patentee has left it wholly ambiguous and 
uncertain, so loosely defined, and so inaccurately expressed, 
that the court cannot, upon fair interpretation of the words, 
and without resorting to mere vague conjecture of intention, 
gather what the invention is, then the patent is void for this 
defect. But if the court can clearly see what is the nature 
and extent of the claim, by a reasonable use of the means 
of interpretation of the language used, then, it is said, the 
patentee is entitled to the benefit of it, however imperfectly 
and inartificially he may have expressed himself. For this 
purpose, phrases standing alone are not to be singled out, 
but the whole is to be taken in connection. 

§ 118. The statute requires the patentee to give "a writ- 
ten description of his invention or discovery." This involves 
the necessity, in all cases where the patentee makes use of 
what is old, of distinguishing between what is old and what is 
new. He is required to point out in what his invention or dis- 
covery consists; and if he includes in his description what has 
been invented before, without showing that he does not claim 
to have invented that, his patent will be broader than his inven- 
tion, and, therefore, void. Whatever appears to be covered 
by the claim of the patentee, as his own invention, must be 
taken as part of the claim, for courts of law are not at liberty 



THE SPECIFICATION. 61 

to reject any part of the claim ; and, therefore, if it turns out 
that anything claimed is not new, the patent is void, how- 
ever small or unimportant such asserted invention may be. 

^ 119, But there is a very important rule to be attended 
to in this connection, viz., that a specification should be so 
construed, as, consistently with the fair import of language, 
will make the claim co-extensive with the actual discovery. 
So that a patentee, unless his language necessarily imports 
a claim of things in use, will be presumed not to intend to 
claim things which he must know to be in use. 

^ 120. The object of the distinction between what is 
new and what is old is to show distinctly what the patentee 
claims as his invention. But it has been said, that the mere 
discrimination between what is old and what is new, will 
not, in all cases, show this, for perhaps the patentee does 
not claim all that is new. But the purpose of the statute 
shows that the object of the specification is, to state distinctly 
what the patentee claims as the subject-matter of his inven- 
tion or discovery; and the discrimination commonly made 
between what is new and what is old, is one of the means 
necessary to present clearly the subject-matter of the inven- 
tion or discovery. In order to make this discrimination, the 
patentee is not confined to any precise form of words. The 
more usual form is to state affirmatively what the patentee 
claims as new, and if he makes use of anything old, to state 
negatively that he does not claim that thing. It is not 
enough that the thing designed to be embraced by the patent 
should be made apparent on a trial, by a comparison of the 
new^ with the old machine. The specification must distin- 
guish the new from the old, so as to point out in what the 
improvement consists. 

§ 121. In describing what is old, it is not always neces- 
sary to enter into detail. Things generally known, or in 
6 



62 LAW OF PATENTS. 

common use, may be referred to in general terms, provicled 
they create no ambiguity or uncertainty, and provided such 
reference is accompanied by an intelligible description of 
what is new. In describing an improvement of a machine, 
or, what is the same thing, an improved machine, great care 
must be taken not to describe the whole in such a way as 
to make it appear to be claimed as the invention of the pa- 
tentee. The former machine, or other thing, should be set 
forth in the patent sufficiently to make known, according to 
the nature of the case, what it is that the patentee engrafts 
his improvement upon; he should then disclaim the inven- 
tion of the thing thus referred to or described, and state dis- 
tinctly his improvement as the thing which he claims to 
have invented. One of the most common defects in a 
specification consists in that sort of vagueness and ambi- 
guity in the manner of describing the invention, which 
makes it difficult or impossible to determine what the inven- 
tion is. This is an objection distinct from an ambiguity in 
the terms made use of. Thus, where the directions con- 
tained in a specification were " to take dny quantity of lead 
and calcine it, or minium, or red lead," the objection was 
that it was uncertain whether the minium and red lead were 
to be calcined, or only the lead. So, too, if it be stated that 
a Avhole class of substances may be used to produce a given 
efiect, when, in fact, only one is capable of being so used 
successfully, an ambiguity is at once produced, and the 
public are misled ; but if the patentee states the substances 
which he makes use of himself, and there are still other 
substances which will produce the effect, and he claims them 
by a generic description, as comprehended within his inven- 
tion, his claim will not be void for ambiguity, or too broad 
for his invention, provided the combination is new in respect 
to all the substances thus referred to. 

§ 122. In like manner, where a particular effect or pur- 
pose in machinery is a part of the invention, and that effect 



THE SPECIFICATION. 63 

may be produced in several modes, it is sufficient for the 
patentee to state the modes which he contemplates as best, 
and his claim will not be void, as too vague or comprehen- 
sive, although he claims the variations from those modes as 
being equally his invention, without describing the manner 
of producing those variations. 

§ 123. This kind of ambiguity is also distinguishable 
from the want of clear or specific directions, which will 
enable a mechanic to make the thing described. A specifi- 
cation may be perfectly sufficient, as to the point of stating 
what the invention is, and yet the directions for making the 
thing may be so vague and indefinite, as not to enable a 
skilful mechanic to accomplish the object. It is for this 
reason, as we have seen, that the question, whether the 
specification discloses what the invention is, is a question 
for the court on construction of the patent; while the ques- 
tion, whether it sufficiently describes the mode of carrying 
the invention into practice, is a question for the jury. 

^ 124. The ambiguity produced by a too great fulness of 
detail in the specification is likely to mislead both in deter- 
mining what the invention claimed is, and in determining 
whether it is described with such accuracy as will enable a 
competent workman to put it in practice. We shall have 
occasion hereafter to state the rule, that the patentee is 
bound to disclose the most advantageous mode known to 
him, and any circumstance conducive to the advantageous 
operation of his invention; and it is a correlative of this 
rule, that if things wholly useless and unnecessary are intro- 
duced into the specification, as if they were essential, al- 
though the terms are perfectly intelligible, and every neces- 
sary description has been introduced, and the parts claimed 
are all newly invented, the patent may be declared void. 
The presumption, in such cases, is, that the useless and 
unnecessary descriptions were introduced for the purpose of 



64 LAW OF PATENTS. 

overloading the subject and clouding the description, in 
order to mislead the public and conceal the real invention. 

^ 125. There is one case where it seems to have been 
held that an improved mode of working his machine by the 
patentee, different from the specification of his patent, casts 
upon him the burthen of showing that he made the im- 
provement subsequently to the issuing of his patent; other- 
wise it will be presumed that he did not disclose in his 
specification the best method known to him. But where a 
patentee of an improved machine claimed as his invention a 
part of it which turned out to be useless, it was held that 
this did not vitiate the patent, the specification not describing 
it as essential to the machine. At the same time, it is 
necessary that the specification should be full and explicit 
enough to prevent the public from infringing the right of 
the patentee. An infringement will not have taken place, ]/' 
unless the invention can be practised completely by following 
the specification ; otherwise, it has been said, it would be 
an infringement to do that perfectly, which, according to 
the specification, requires something else to be done to make 
it perfect. An infringement is a copy made after and agree- 
ing with the principle laid down in the patent ; and if the 
patent does not fully describe everything essential to the 
making or doing of the thing patented, there will be no in- 
fringement by the fresh invention of processes which the 
patentee has withheld from the public. 

§ 126. The ambiguity produced by a misuse of terms, so 
as to render the specification unintelligible, will be as fatal 
as any other defect. Thus, where the directions were to 
use " sea-salt, or sal-gem, or fossil-salt, or any marine-salt," 
and it appeared that " sal-gem " was the only thing that could 
be used, and that " fossil-salt " was a generic term, including 
" sal-gem," as well as other species of salt, it was held that 
the use of the term *' fossil-salt " could only tend to mislead 



THE SPECIFICATION. 65 

and to create unnecessary experiments, and therefore that the 
specification was in that respect defective. In like manner, 
where the specification directed the use of " the finest and 
purest chemical white-lead," and it appeared that no such 
substance was known in the trade by that name, hut that 
white-lead only was known, the specification was held de- 
fective. But a mere mistake of one word for another in 
writing or printing, if explained by other parts of the patent 
and specification, as the use of the word " painting " for 
" printing," is immaterial. 

^ 127. The description of an improvement, when an im- 
provement is the real subject-matter of the patent, should 
be made in such a manner as will clearly show that the 
improvement only is claimed by the patentee. If a ma- 
chine substantially existed before, and the patentee makes 
an improvement therein, his patent should not comprehend 
the whole machine in its improved state, but should be con- 
fined to his improvement ; and this is true, although the 
invention of the patentee consists of an addition to the old 
machine, by which the same effects are to be produced in a 
better manner, or some new combinations are added, in 
order to produce new effects. But if well-known effects are 
produced by machinery which in all its combinations is en- 
tirely new, the subject-matter will be a new machine, and 
of course the patent will cover the whole machine. 

§ 12S. If the invention be an improvement, and be claimed 
as such, but nothing is said of any previous use, of which the 
use -proposed is averred to be an improvement, the patent 
may incur the risk of being construed as a claim of entire 
and original discovery. Hence arises the necessity for re- 
citing what had formerly been done, and describing a differ- 
ent mode as the improvement claimed. 

^ 129. But in describing the improvement of a machine in 
6* 



66 LAW OF PATENTS. 

use and well known, it is not necessary to state in detail the 
structure of the entire and improved machine. It is only 
necessary to describe the improvement, by showing the parts 
of which it consists, and the effects which it produces. In 
the case of machinery there is a particular requisition in 
the statute, designed to ensure fulness and clearness in the 
specification. " And in case of any machine, he (the paten- 
tee) shall fully explain the principle, and the several modes 
in which he contemplated the application of that principle, 
or character by which it may be distinguished from other 
inventions ; and shall particularly specify and point out the 
part, improvement, or combination, which he claims as his 
own invention or discovery." By the principle of a machine, 
as used in this clause of the statute, is to be understood the 
peculiar structure and mode of operation of such machine ; 
or, as the statute itself explains it, the character by which it 
may be distinguished from other inventions. By explaining 
" the several modes in which he has contemplated the appli- 
cation of that principle," the statute is presumed to direct the 
patentee to point out all the modes of applying the princi- 
ple, which he claims to be his own invention, and which he 
means to have covered by his patent, whether they are those 
which he deems the best, or are mere formal variations from 
the modes which he prefers. In other words, he is to state 
not only the peculiar device or construction which he deems 
the best for producing the new effect exhibited in his machine, 
but also all the other modes of producing the same effect, 
which he means to claim as being substantially applications 
of the same principle. But, in doing this, it is not, as we 
have seen, necessary for him to enter into a minute descrip- 
tion of the mode of producing those variations of structure 
which he thus claims, in addition to the structure which he 
prefers. It is sufficient, if he indicates what variations of 
the application of the principle he claims beyond those which 
he deems the best. 



THE SPECIFICATION. 67 

§ 130. The duty of determining what the claim of the 
patentee is involves the necessity of determining whether 
the description in the specification discloses a patentable 
subject. The real invention may be a patentable subject ; 
but at the same time it may be claimed in such a way 
as to appear to be a mere function, or abstract principle, 
which it will be the duty of the court to declare is not 
patentable ; whereas, if it had been described differently, it 
would have been seen to be a claim for a principle or func- 
tion embodied in a particular organization of matter for a 
particular purpose, which is patentable. The patentee may 
have been engaged in investigations into the principles of 
science or the laws of nature. He may have attained a 
result, which constitutes a most important and valuable 
discovery, and he may desire to protect that discovery by a 
patent; but he cannot do so b}'' merely stating his discovery 
in a specification. He must give it a practical application to 
some useful purpose, to attain a result in arts or manufac- 
tures not before attained, and his specification must show 
fhe application of the principle to such a special purpose, 
by its incorporation with matter in such a way as to be in a 
condition to produce a practical result. Care should be 
taken, therefore, in drawing specifications, not to describe 
the invention as a mode or device for producing an effect, 
detached from machinery, or from the particular combination 
or use of matter by which the effect is produced. The 
danger in such cases is, that the claim will appear to be a 
claim for an abstract principle, or for all possible modes of 
producing the effect in question, instead of being, what alone 
it should be, a claim for the particular application of the 
principle which the patentee professes to have made. 

§ 131. This is well illustrated by several cases. In one, 
the invention claimed was " the communication of motion 
from the reed to the yarn-beam, in the connection of the one 
with the other, which is produced as follows," describing the 



68 LAW OF PATENTS,. 

mode. The patent was sustained only by construing ft as 
a claim for the specific machinery invented by the patentee 
for the communication of motion from the reed to the yarn- 
beam, specially described in the specification. As a claim, 
for all possible modes of communicating the motion, &c., it 
would have been utterly void. In another case, a patent 
" for an improvement in the art of making nails, by means 
of a machine which cuts and heads the nails at one opera- 
tion," was seen at once not to be a grant of an abstract 
principle, but of a combination of mechanical contrivances 
operating to produce a new effect, and constituting an 
improvement in the art of making nails. So, too, where 
the patentee, in a patent for a machine for turning irregular 
forms, claimed " the method or mode of operation in the 
abstract explained in the second article, whereby the infinite 
variety of forms, described in general terms in this article, 
may be turned or wrought," and the second article in 
his specification explained the structure of a machine, by 
which that mode of operation was carried into effect, and 
the mode of constructing such a machine so as to effect the. 
different objects to be accomplished, it was held that the 
specification did not claim an abstract principle or function, 
but a machine. So, also, it has been held that the making 
of wheels on a particular principle, which is described in the 
specification, is the subject of a patent; and where the 
plaintiff claimed as his invention " the application of a self- 
adjusting leverage to the back and seat of a chair, whereby the 
weight on the seat acts as a counterbalance to the pressure 
against the back of such chair, as above described," it was 
held not to be a claim to a principle, but to an application 
to a certain purpose, and by certain means. 

^ 132. But on the other hand, a claim to a principle, to 
be carried into effect by any means, without describing an 
application of the principle by some means, is a claim to the 
abstract principle. As, where a specification stated that 



THE SPECIFICATION. 69 

" it is claimed as new, to cut ice of a uniform size by means 
of an apparatus worked by any other power than human," 
it was held that this claim to the art of cutting ice by means 
of any other power than human was utterly void. It is, 
therefore, essential that the specification should describe 
some practical mode of carrying the principle into effect ; 
and then the subject-matter will be patentable, because it 
will be, not the principle itself, but the mode of carrying it 
into effect ; and on the question of infringement it will be 
for the jury to say, whether another mode of carrying it into 
effect is not a colorable imitation of the mode invented by 
the patentee. 

§ 133. This being the case, the question next arises 
whether it is necessary, after having described the applica- 
tion of the principle by some mechanical contrivance, or 
other arrangement of matter, to claim in the specification 
all the other forms of apparatus, or modifications of matter, 
by which the principle may also be applied in order to pro- 
duce the same beneficial effect, or whether the patent does 
not cover all these, without particular description, by cover- 
ing the application of the principle. When we consider 
that the subject-matter of such a patent is the application of 
the principle effected by means of some machinery, or other 
arrangement, it will be apparent that the reason why the 
patentee is bound to describe some machinery or practical 
method of making the application, is in order to show that 
he has actually applied the principle, and to enable others 
to do so after him. But the real subject of the patent is the 
practical application of the principle ; and hence, although 
the means by which the patentee has made that application 
must be described, in order to show that he has done what 
he says he has done, and to enable others to do what he 
says can be done, yet a variation of the means and 
machinery, if it produces the same beneficial effect, that is, 
the same application of the same principle, does not show 



70 LAW OF PATENTS. 

that the party making such variation has not infringed the- 
patent, by making use of that which exclusively belonged 
to another, viz., the application of the principle to produce a 
particular effect. 

§ 134. Examples will best illustrate this distinction 
Minter's patent, for a self-adjusting chair, which has been 
already referred to, was a case of the application of a well 
known principle, that of the lever, for the first time applied 
to a chair. He made no particular claim of shape or form 
for the construction of the chair, but showed that if a lever 
was applied to the back of a chair, so that the weight of the 
seat would act as a counterpoise to the back, in whatever 
posture the occupant might be sitting or reclining, a self- 
adjusting chair would be obtained. Now, there might be 
various modes of constructing a chair on this principle ; but 
as the constructing of chairs on this principle was the true 
subject of the patent, the court held the making of any chair 
upon the same principle of a self-adjusting leverage, was an 
infringement.. 

§ 135. Neilson's- patent involved the princfple of blowing- 
furnaces for the smelting of iron, with a blast of hot air, 
instead of cold, and he applied that principle by finding out 
a mode by which air may be introduced in a heated state 
into the furnace, viz., by heating the air in a close vessel- 
between the blowing apparatus and the furnace. The 
specification, after stating that the air, heated up to red heat,, 
may be used, but that it is not necessary to go so far to^ 
produce a beneficial effect, proceeded to state that the size 
of the receptacle would depend on the blast necessary for 
the furnace, and gave directions as to that. It then added,. 
" The shape of the receptacle is immaterial to the effect,,, 
and may be adapted to local circumstances." After great 
consideration, it was held that the word " effect "' was not 
meant to apply to the degree of heat to be given to the air ia 



I 



THE SPECIFICATION. _ 71 

ithe Tieating receptacle, but that any shape of the heating 
^receptacle would produce the beneficial effect of passing 
heated air into the furnace. This construction settled what 
the patent was for, viz., the application of the principle ot 
blowing with hot air, by means of a vessel in which the air 
should be heated on its passage from the blowing apparatus 
to the furnace. Consequently the subject-matter embraced 
all the forms of apparatus by which the application of the 
same principle could be effected. 

^ 136. In this case, it v;as also said that the omission to 
mention in the speciiicatioa anything which the patentee 
knows to be necessary for the beneficial enjoyment of the 
invention is a fatal defect; but the omission to mention 
■something which contributes only to the degree of benefit, 
provided the apparatus would work beneficially and be 
worth adopting, is not a fatal defect. 

^ 137. As it is the duty of the court to determine, on the 
construction of the patent, what the subject-matter is, it is 
•often necessary to decide whether the patentee claims a 
combination of several things, or the distinct invention of 
several things, or both. General principles cannot be laid 
down for the determination of questions of this kind, de- 
pending exclusively on the particular facts. There is, 
however, one circumstance, that will always be decisive, in 
construing a patent, against a <;laim for the several things 
described in the specification, and that is, that one or more 
of them is not new. If this turns out to be the case, the 
question may then be, whether the patent can be sustained 
for the combination. In determining this question, it is to 
be observed that a patent for a combination of three things 
cannot at the same time be a patent for a combination of 
any two of them. If the subject-matter is the combination 
of any given number of things, or processes, or parts, no 



72 LAW OF PATENTS. 

portion of the combination less than the whole can be con- 
sidered at the same time as being also the subject-matter. 

§ 138. The rule which we have thus endeavored to illus- 
trate, which requires the patentee so to describe his inven- 
tion as to enable the public to know what his claim is, of 
course imposes upon him the duty of not misleading the 
public, either by concealing anything material to the inven- 
tion, or by adding anything not necessary to be introduced. 
The ambiguity which we have been considering in the pre- 
ceding pages maybe produced involuntarily; but there is a 
special provision of the statute aimed at the voluntary con- 
cealment or addition of anything material. The statute 
enacts it as one of the defences to an action on a patent, 
that the specificatiorr " does not contain the whole truth 
relative to his invention or discovery, or that it contains 
more than is necessary to produce the described effect ; 
which concealment or addition shall fully appear to have 
been made for the purpose of deceiving the public." This 
defence will be made good, when it appears that the paten- 
tee fraudulently concealed something that he knew to be 
material to the practice of his invention, or fraudulently 
added something which he knew was not useful, material, 
or necessary, at the time when he prepared his specification. 
If it was subsequently discovered not to be useful, material, 
or necessary, his patent will not be affected by it. 

^ 139. II. The second rule for preparing a specification 
is, 

To describe the invention in such a manner as to enable 
the "public to practise it, from the specification alone. 

^ 140. The statute requires the patentee to describe "the 
manner and process of making, constructing, using, and 
compounding his invention or discovery, in such full, clear, 
and exact terras, avoiding unnecessary prolixity, as to enable 



THE SPECIFICATION. 73 

any person sliilled in the art or science to whicli it apper- 
tains, or with which it is most nearly connected, to make, 
construct, compound, and use the same ; and in case of any 
machine, he shall fully explain the principle and the several 
modes in which he has contemplated the application of that 
principle or character by which it may be distinguished 
from other inventions; and shall particularly specify and 
point out the part, improvement, or combination which he 
claims as his own invention or discovery." 

§ 141. We have seen that the question whether a speci- 
fication answers this requisite of the statute, is a question 
of fact for the jury ; and although it is not necessary that 
technical terms should be made use of in a specification, 
they often are made use of, and often require to be explained 
b}^ evidence. In judging of a specification, therefore, a dis- 
tinction must be taken between that sort of ambiguity 
which a person unacquainted with technical terms v^^ould 
encounter, and the ambiguity which might appear to a per- 
son skilled in the particular art. It is not necessary that 
the specification should contain an explanation level with 
the capacity of every person, which would often be impos- 
sible. The statute allows the patentee to address himself 
to persons of competent skill in the art, and it requires him 
to use such full, clear, and exact terms as will enable that 
class of persons to reproduce the thing described from the 
•description itself. It is, therefore, important to ascertain 
what the rules of construction are, which define what will 
constitute an ambiguity or uncertainty to artists and persons 
skilled in the subject. 

§ 142. And^rs^, with regard to the persons whose judg- 
ment and apprehension are thus appealed to ; they are not 
those who possess the highest degree of skill or knowledge 
in the particular art or science to which the subject-matter 
belongs, nor are they day-laborers ; they are practical work- 
7 



74 LAW OF PATENTS. 

men, or persons of reasonably competent skill in the par- 
ticular art, science, or branch, of industry. If persons of 
the highest skill were those whom the law has in contem- 
plation, the object of a specification, which is to enable com- 
petent persons to reproduce the thing patented, without 
making experiments, inventions, or additions of their own, 
could not generally be answered. 

§ 143. Secondly, as to the application of their knowledge 
and skill, by such persons, to the understanding and carry- 
ing out of the description given by the patentee. The 
description must be such as will enable persons of compe- 
tent skill and knowledge to construct or reproduce the thing 
described, without invention or addition of their own, and 
without repeated experiments. Thus it has been held, that 
any material alteration to be made in existing apparatus or 
machinery, must be stated, and not left to be supplied by 
the workman ; as, with reference to the materials employed, 
or their form, or the speed of the parts, or their relative 
dimensions, where these are material. So, too, the specifi- 
cation is insufficient, if information must be derived from 
experiments, or from seeing others make the thing described ; 
or, as it has also been said, if it requires the solution of a 
problem. And, generally, a specification, to be valid, must 
be such as, when fairly followed out by a competent work- 
man, without invention or addition, the object of the patent 
may be obtained. 

§ 144. Slight defects in a specification will sometimes 
prevent the object of the patent from being obtained, by any 
competent person who n)ay undertake to apply it, and will 
therefore render the patent void, because they create a 
necessity for the exercise of inventive power on the part of 
the person who thus undertakes to apply the description. 
As the omitting to state the use of tallow, which the 
patentee employed for facilitating the manufacture of steel 



THE SPECIFICATION. 75 

trusses ; or, in a patent medicine, stating the ingredients 
without stating the proportions. If anything he omitted, 
which gives an advantageous operation to the thing invent- 
ed, it will vitiate the patent ; as the omission to state the 
use of a material, aqua-fortis, which the patentee used him- 
self for obtaining the effect more rapidly ; for the patentee 
is bound to give the most advantageous mode known to him, 
and any circumstance conducive to the advantageous opera- 
tion ; otherwise, he does not pay the price for his exclusive 
privilege, because he does not give the public the benefit of 
all that he knows himself. 

^ 145. So, too, if a specification directs the use of a sub- 
stance, which, as generally known, contains foreign matter, 
the presence of which is positively injurious, and does not 
show any method of removing that foreign matter, or refer 
to any method generally known, or state how the substance 
in a proper state can be procured, the specification will be 
defective. 

^ 146. In like manner, a specification will be defective, 
if an article be described by a particular name, the patentee 
knowing that the requisite article cannot ordinarily be pro- 
cured under the name by which it is described in the speci- 
fication, and it be not stated where it may be procured ; 
because the public have not that full and precise information 
which they have a right to require. A specification will 
also be defective, which states that the manner in which a 
power is to be applied varies with the circumstances in 
some measure, without showing in what the improvement 
consists, as distinguished from all former modes of doing 
the same thing. If obscure terms be employed for the sake 
of concealment, so as to induce the belief that elaborate 
processes are necessary, when the simplest will succeed, the 
specification is bad ; and if a patentee states that he prefers 



76 LAW OF PATENTS. 

a certain material, having ascertained that no other will 
answer, he misleads the public. 

§ 147. The rule, however, which forbids a patentee to 
leave the public to find out by experiment how to apply his 
discovery or invention, is subject to one important limitation. 
If, for instance, the specification of a patent for a composition 
of matter is so drawn, that no one can use the invention, 
without first ascertaining by experiment the exact proportion 
of the different ingredients required to produce the intended 
result, the patent will be void. If, in such a specification, 
the patentee gives a certain proportion as the general rule 
applicable to the ordinary state of the ingredients, he may, 
without the risk of having his patent declared void for 
vagueness and uncertainty, state other and variable propor- 
tions as exceptions to the rule, applicable to the varying 
states of the ingredients, although the precise proportions 
adapted to a given state of the ingredients other than the 
usual state, can only be ascertained by computing it frona 
the general rule, after the particular state of the ingredients 
is ascertained. In such cases, it is for the jury to decide, 
on the evidence of experts, Avhether the general rule given 
is susceptible of application, and whether it furnishes the 
means of determining the proportions to be used, in the ex- 
cepted cases, by t^e exercise of the ordinary knowledge and 
skill of the workman. 

^ 148. But although it is necessary that a specification 
should clearly and fully describe the invention, and should 
give the best process, materials, and methods, known to the 
inventor, yet it is not necessary for the patentee to describe 
the mode of making everything which he uses, or detail 
known processes, or explain the terms appropriate to the 
particular art, or science, or branch of industry, to which his 
invention belongs. The specification is, as we have seen- 



THE SPECIFICATION. 77 

addressed to persons acquainted with the nature of the 
business; some technical knowledge is presumed on the 
part of those who will undertake, after the patent is expired, 
to carry out the invention ; and such persons are to be called 
as witnesses to explain the language to the jury, while the 
patent is in force, and to show that it is capable of being 
understood by those to whom it is addressed. Accordingly 
it has been said, that a specification containing scientific 
terms, which are not understood, except by persons acquainted 
with the nature of the business, is not bad because an ordi- 
nary person does not understand it, provided a scientific 
person does; but a specification using common language, 
and stating that by which a common man may be misled, 
though a scientific man would not, when it does not profess 
to use scientific terms, and an ordinary man is misled by it, 
would not be good. And it has been held, that if a specifi- 
cation contain an untrue statement in a material circum- 
stance, of such a nature that, if literally acted upon by a 
competent workman, it would mislead him, and cause the 
experiment to fail, the specification is therefore bad, and the 
patent invalidated, although the jury, on the trial of an action 
for the infringement of the patent, find that a competent 
workman, acquainted with the subject, would not be misled 
by the error, but would correct it in practice. 

§ 149. The specification need not describe that which is 
within the ordinary knowledge of any workman who would 
be employed to put up the apparatus ; as, a condenser, in 
constructing a gas apparatus. So, too, a deviation from the 
precise dimensions shown by the specification and model, so 
as to make different parts work together, is within the 
knowledge of any workman. But if the practical application 
of the invention involves a particular kind of knowledge on 
the part of the workman, requiring him to do that which a 
person of ordinary engineering skill ought to know how to 
do, it must at least suggest to him that that thing is to be 
7# 



78 LAW OF PATENTS. 

done, if it does not specifically point out the mode of doing 
it. In like manner, it is not necessary, in the description of 
a machine, to state of what material every part should be 
made, where the principle of operation and the effect are the 
same, whether the parts be made of one material or another; 
but if a particular material be essential to the successful 
operation of the machine, as the patentee uses it, he must 
direct the use of that material. 

§ 150. In the case of machinery, the statute directs the 
patentee to accompany his specification with " a drawing or 
drawings, and written references, where the nature of the 
case admits of drawings." The object of annexing drawings 
is both to distinguish the thing patented from other things 
known before, and to explain the mode of constructing the 
subject of the patent. It has been settled, that the drawings 
constitute a part of the specification, when annexed thereto, 
and may be used to explain or help out the otherwise imper- 
fect description in the specification. So that it is not neces- 
sary that the description should be wholly in writing, but it 
may be partly in writing and partly in drawing; and if, by 
a comparison of the words and the drawings, the one will 
explain the other sufficiently to enable a skilful mechanic to 
perform the work, and to show what is the invention claimed, 
the specification will be sufficient. And it has been held, 
that in order to make a drawing when annexed to or accom- 
panying a specification, part of the specification, so that the 
written description may be read by it, it is not necessary 
that the written description should contain references to the 
drawing ; that the direction in the statute, to annex " draw- 
ings and written references," means that where references 
from the writing to the drawing are necessary to the under- 
standing of the machine or improvement, they are to be 
made ; but that the description of many machines or im- 
provements, when accompanied by a drawing, may be per- 
fectly understood without references in the description itself. 



THE SPECIFICATION. T^ 

§ 151. It was formerly held in England that the drawings 
annexed to specifications ought to be drawn on a scale ; so 
that the relation and proportion of the parts to each other, 
and the dimensions of the different parts, might appear in 
due ratio to each other. But this rule has been modified ; 
and it seems now to be 'considered that if a mechanic can 
make the subject of the patent from the drawing in perspec- 
tive, it is not necessary that there should be a scale. Indeed, 
it is a necessary consequence of the rule which makes the 
written description open to explanation by the drawing, to 
hold that the drawing is open to explanation by the written 
description. So long as both together enable the public to 
know and practise the invention, it must be immaterial 
whether the drawing is made upon a scale or not. But if 
the subject of the patent could not be made, without many 
experiments, unless the drawing is upon a scale, then un- 
doubtedly the whole specification taken together, being the 
written description and the drawing, would be defective. 

^ 152. It should not be forgotten, that the statute requires 
a formal attestation of the specification and drawings. They 
must be signed by the inventor and by two witnesses. It 
has been suggested, that the signing of the specification 
referring to the drawings is in effect attesting the drawings. 
But whether the statute is to be so construed as to require 
both the specification and the drawings to be signed, has not 
been decided. 

§ 153. Provision is made by the thirteenth section of the 
Act of 1836 for the amendment of the specification by the 
addition of new improvements made after the patent has 
issued. The description of any such new improvement may 
be filed in the Patent Office, and is directed to be annexed by 
the commissioner to the original specification, with a certifi- 
cate of the time of its being so annexed, and thereafter it is 



80 LAW OF PATENTS. 

to have the same effect as if it had been embraced in the 
original specification, 

^ 154, A still further provision is made for the amend- 
ment of a redundant specification, by the filing of a Dis- 
claimer. The Act of 1837, eh. 45, § 7, provides, that, 
" whenever any patentee shall have, through inadvertence, 
accident, or mistake, made his specification of claim too 
broad, claiming more than that of which he was the original 
or first inventor, some material and substantial part of the 
thing patented being truly and justly his own, any such 
patentee, his administrators, executors and assigns, whether 
of the whole or of a sectional interest therein, may make 
disclaimers of such parts of the thing patented as the dis- 
claimant shall not claim to hold by virtue of the patent or 
assignment, stating therein the extent of his interest in such 
patent, which disclaimer shall be in writing, attested by one 
or more witnesses, and recorded in the Patent Office, on 
payment by the person disclaiming, in manner as other 
patent duties are required by law to be paid, of the sum of 
ten dollars. And such disclaimer shall thereafter be taken 
and considered as part of the original specification, to the 
extent of the interest which shall be possessed in the patent 
or right secured thereby, by the disclaimant, and by those 
claiming by or under him subsequent to the record thereof 
But no such disclaimer shall affect any action pending at the 
time of its being filed, except so far as may relate to the 
question of unreasonable neglect or delay in filing the same," 

§ 155. The 9th section of the same act provides as fol- 
lows : " (Anything in the fifteenth section of the act to 
which this is additional to the contrary notwithstanding) 
that, whenever by mistake, accident, or inadvertence, and 
without any wilful default or intent to defraud or mislead 
the public, any patentee shall have in his specification 
claimed to be the original and first inventor or discoverer of 



THE SPECIFICATION. 81 

any material or substantial part of the thing patented, of 
which he was not the first and original inventor, and shall 
have no legal or just right to claim the same, in every such 
case the patent shall be deemed good and valid for so much 
of the invention or discovery as shall be truly and bona fide 
his own : Provided, it shall be a material and substantial 
part of the thing patented, and be definitely distinguishable 
from the other parts so claimed without right as aforesaid. 
And every such patentee, his executors, administrators and 
assigns, whether of a whole or a sectional interest therein, 
shall be entitled to maintain a suit at law or in equity on 
such patent for any infringement of such part of the inven- 
tion or discovery as shall be bona fide his own as aforesaid, 
notwithstanding the specification may embrace more thaa 
he shall have any legal right to claim. But, in every such 
case in which a judgment or verdict shall be rendered for 
the plaintiff*, he shall not be entitled to recover costs against 
the defendant, unless he shall have entered at the Patent 
Office, prior to the commencement of the suit, a disclaimer 
of all that part of the thing patented which was so claimed 
without right : Provided, however, that no person bringing 
any such suit shall be entitled to the benefit of the provisions 
contained in this section, who shall have unreasonably 
neglected or delayed to enter at the Patent Office a dis- 
claimer as aforesaid." 

^ 156, The disclaimer mentioned in the seventh section 
has been held to apply solely to suits pending when the dis- 
claimer was filed in the Patent Office ; and that mentioned 
in the ninth section to suits brought after the disclaimer is 
so filed. 



CHAPTER II. 

PROCEEDINGS AT THE PATENT OFFICE. 

I. Caveat for incomplete invention. 
II. The Petition, Oath, Payment of fees. 

III. Signatures of the Secretary of State and Commissioner. 

IV. Interfering applications. 

V. Renewal and Amendment of Patents. 

Caveat for Incomplete Invention. 
^ 157. The twelfth section of the Act of July 4, 1836, 
provides that any citizen of the United States, or alien who 
shall have been resident in the United States one year next 
preceding', and who shall have made oath of his intention 
to become a citizen thereof, who shall have invented any 
new art, machine, or improvement thereof, and shall desire 
further time to mature the same, may, on payment of the 
sum of twenty dollars, file in the Patent Office a caveat, 
setting forth the design and purpose thereof, and its princi- 
pal and distinguishing characteristics, and praying protec- 
tion of his right, till he shall have matured his invention ; 
which sum of twenty dollars, in case the person filing such 
caveat shall afterwards take out a patent for the invention 
therein mentioned, shall be considered a part of the sum 
required for the same. And such caveat shall be filed in the 
confidential archives of the office, and preserved in secrecy. 
And if application shall be made by any other person within 
one year from the time of filing such a caveat, for a patent 
of any invention with which it may in any respect interfere, 
it shall be the duty of the commissioner to deposit the 
description, specifications, drawings, and model, in the 
confidential archives of the office, and to give notice, by 
mail, to the person filing the caveat, of such application, 



THE PETITION, OATH, PAYMENT OF FEES, ETC. 83 

who shall, within three months after receiving the notice, if 
he would avail himself of the benefit of his caveat, file his 
description, specifications, drawings, and model ; and if, in 
the opinion of the commissioner, the specifications of claim 
interfere with each other, like proceedings may be had in all 
respects as are provided in the case of interfering applica- 
tions. 

The Petition, Oath, Payment of Fees, etc. 

§ 158. The Act of 1836, § 6, requires an inventor who 
desires to obtain a patent to " make application in writing 
to the Commissioner of Patents," &c. This application in 
writing has, from the origin of the government, been by way 
of petition, generally with the specification annexed and 
referred to, or accompanied by the specification, filed at the 
same time. The form of the petition is not materia], pro- 
vided it set forth the facts to which the applicant is required 
to make oath. When filed it is to be presumed to adopt 
the specification, or schedule, filed at the same time, and to 
ask for a patent for the invention therein described. 

§ 159. The applicant is also required to make oath or 
affirmation that he does verily believe that he is " the origi- 
nal and first inventor," &c., " and that he does not know or 
believe that the same was ever before known or used," and 
also of what country he is a citizen ; which oath or affirma- 
tion may be made before any person authorized by law to 
administer oaths, 

^ 160. The applicant is required to make oath or affirma- 
tion, not that he is the original and first inventor or discov- 
erer, but that he believes himself to be so. He cannot 
know absolutely whether he first invented or discovered the 
thing for which he claims a patent, but he may believe that 
he did ; and it is only when he is willing to make oath that 
he so believes, that the law grants him the patent. A sub- 



84 LAW OF PATENTS. 

sequent section of the same statute provides for one case, in 
which a patent shall still be valid, if issued to an applicant 
who believed himself to be the first inventor or discoverer, 
although he was not so, in point of fact. This case is 
where the invention or discovery had been previously known 
or used in a foreiga country, but had not been patented or 
described in any public work, and the patentee was igno- 
rant of that fact. If the patentee, before making his appli- 
cation, had learned that the thing had been known or used 
in a foreign country, although not patented or described in 
any foreign work, he cannot have believed himself to be 
the first inventor or discoverer. But if he learn the fact 
after he has taken the oath, it will not invalidate his patent. 

§ 161. An irregularity in the form of the oath will be 
cured by the issuing of the patent, and it seems that a 
patent would be valid, when issued, although the oath might 
not have been taken at all. It has been held that the taking 
of the oath is only a prerequisite to the granting of the 
patent, and in no degree essential to its validity ; so that if 
the proper authorities, from inadvertence or any other cause, 
should grant a patent, where the applicant had not made 
oath according to the requisitions of the statute, the patent 
would still be valid. But where the oath has been taken 
and is recited in the patent, it is the foundation of the bur- 
then of proof thrown on the party who alleges that the 
patentee was not the original and first inventor. 

^ 162. The ninth section of the statute provides that 
before any application for a patent shall be considered by 
the commissioner, the applicant shall pay into the treasury 
of the United States, or into any of the deposit banks to 
the credit of the treasury, if he be a citizen of the United 
States, or an alien, and shall have been resident in the 
United States for one year next preceding, and shall have 
made oath of his intention to become a citizen thereof, the 



RENEWAL OR AMENDMENT OF A PATENT. 85 

sum of thirty dollars ; if a subject of the King of Great 
Britain, the sum of five hundred dollars. 

Signatures of the Secretary of State and of the 
Commissioner of Patents. 

§ 163. The Act of July 4, 1836, c. 357, ^ 5, provides that 
patents shall be issued from the Patent Office " in the name 
of the United States, and under the seal of said office, and 
be signed by the secretary of state, and countersigned by 
the commissioner of said office." 

§ 164. It has been held that the sanction of the secretary 
of state to a correction of a clerical mistake in letters- 
patent, may be given in writing afterwards ; and that he 
need not re-sign the letters themselves. But the commis- 
sioner, if he be the same officer who countersigned the let- 
ters originally, may make the correction, without re-signing 
or re-sealing. If the mistake occurs in the copy of the 
patent, and not in the record or enrolment, it may be 
corrected by the commissioner, and made to conform to the 
original. If the mistake in the enrolled patent be a material 
one, the letters cannot operate except on cases arising after 
the correction is made ; but if the correction be of a clerical 
mistake only, it operates back to the original date of the 
letters, unless, perhaps, as to third persons, who have 
acquired intervening rights to be affected by the alteration. 

§ 165. It has also been held, that a signature to the patent, 
and a certificate of copies by a person calling himself " act- 
ing commissioner," is sufficient on its face in controversies 
between the patentee and third persons, as the law recog- 
nizes an acting commissioner to be lawful. 

Eenewal or Amendment of a Patent, 
^ 166. The Act of July 4, 1836, § 13, makes the follow- 
ing provision in case of a defective or insufficient specifica- 
8 



86 LAW OF PATENTS. 

tion, or of the subsequent invention of something which the 
patentee wishes to add to his specification. 

^ 167. " And be it further enacted : That whenever any- 
patent which has heretofore been granted, or which shall 
hereafter be granted, shall be inoperative or invalid, by reason 
of a defective or insufficient description or specification, or 
by reason of the patentee claiming in his specification as his 
own invention, more than he had or shall have a right to 
claim as new ; if the error has or shall have arisen by 
inadvertency, accident, or mistake, and without any fraudu- 
lent or deceptive intention, it shall be lawful for the com- 
missioner, upon the surrender to him of such patent, and 
the payment of the further duty of fifteen dollars, to cause 
a new patent to be issued to the said inventor, for the same 
invention, for the residue of the period then unexpired for 
which the original patent was granted, in accordance with 
the patentee's corrected description and specification. And 
in case of his death, or any assignment by him made of the 
original patent, a similar right shall vest in his executors, 
administrators, or assignees. And the patent so reissued, 
together with the corrected description and specification, shall 
have the same efl^ect and operation in law, on the trial of 
all actions, hereafter commenced, for causes subsequently 
accruing, as though the same had been originally filed in 
such corrected form, before the issuing out of the original 
patent. And whenever the original patentee sliall be desir- 
ous of adding the description and specification of any new 
improvement of the original invention or discovery which 
shall have been invented or discovered by him subsequent 
to the date of his patent, he may, like proceedings being 
had in all respects as in the case of original applications, 
and on the payment of fifteen dollars, as herein before pro- 
vided, have the same annexed to the original description 
and specification; and the commissioner shall certify, on 
the margin of such annexed description and specification, 



RENEWAL OR AMENDMENT OF A PATENT. 87 

the time of its being annexed and recorded ; and the same 
shall thereafter have the same effect in law, to all intents 
and purposes, as though it had been embraced in the original 
description and specification." 

168, It has been held that the decision of the commis- 
sioner in respect to the surrendering of an old patent, and 
granting a new one, is not reexaminable elsewhere, unless 
it appear on the face of the patent that he had exceeded his 
authority, and there is a clear repugnancy between the old 
and the new patent, or the new one has been obtained by 
collusion between the commissioner and the patentee. If 
neither of these things appears, then the presumption that 
the renewed patent is for the same invention as the old 
patent is conclusive. 

^ 169. The same learned judge has also held, that the 
statutes which authorize the reissue of a patent, because of a 
defective or redundant specification or description, without 
fraud, or for the purpose of adding thereto an improvement, 
do not require the patentee to claim, in his renewed patent, 
all things, which were claimed in his original patent, but 
they give him the privilege of retaining whatever he deems 
proper. 

^ 170. When a patent is thus renewed, it is granted for 
the unexpired term, commencing from the date of the origi- 
nal patent which is surrendered. Consequently, it operates 
from the commencement of the original, and will enure to 
the benefit of assignees, who became such before the renewal, 
although no assignment is made to them after the renewal. 

§ 171. The Supreme Court of the United States have 
decided, upon great consideration, that the commissioner of 
patents can lawfully receive a surrender of letters-patent for 
a defective specification, and issue new letters-patent upon 



Ba LAW OF PATENTS. 

an amended specification, after the expiration of the term for 
which the original patent was granted, and pending the 
existence of an extended term of seven years. Such sur- 
render and renewal may be made at any time during such 
extended term. 

§ 172. Specifications may also be amended by another 
process, that of filing a disclaimer, whenever, through inad- 
vertence, accident or mistake, the original claim was too 
broad, claiming more than that of which the patentee was 
the original or first inventor, provided some material and 
substantial part of the thing patented is justly and truly his 
own. Such a disclaimer may be filed in the Patent Office 
by the patentee, his administrator, executors, and assigns, 
whether of the whole or of a sectional interest in the patent ; 
and it will be thereafter taken and considered as part of the 
original specification, to the extent of the interest of the dis- 
claimant in the patent, and by those claiming by or under 
him subsequent to the record thereof. 

§ 173. Patents are sometimes extended by special Acts 
of Congress, passed upon the application of the patentees. 
But by the Act of July 4th, 1836, c. 357, ^ 18, the secretary 
of state, the commissioner of the Patent Office, and the 
solicitor of the treasury were constituted a board of com- 
missioners to hear evidence for and against the extension 
prayed for, and to decide whether, having due regard to the 
public interest therein, it is just and proper that the term of 
the patent should be extended, because the patentee has 
failed to obtain a reasonable remuneration. The commis- 
sioners being satisfied that the patent ought to be renewed, it 
was made the duty of the commissioner of patents to make 
a certificate on the original patent, showing that it is ex- 
tended for a further term of seven years from the expiration 
of the first term. 



EENEWAL OR AMENDMENT OF A PATENT. 89 

§ 174. But by a very recent statute, passed May 27, 1848, 
this power is vested solely in the commissioner of patents, 
who is required to refer the application to the principal 
examiner, having charge of the class of inventions to which 
the case belongs, and, upon his report, to grant or refuse the 
extension, upon the same principles and rules that have 
governed the board provided by the former act. 
8# 



PAET III. 



TRANSMISSION OF THE INTEREST 



LETTERS-PATENT. 



PART III. 

TRANSMISSION OF THE INTEREST IN LETTERS-PATENT 



CHAPTER I. 

OF ASSIGNMENTS AND LICENSES. 

§ 175. The act of Congress of July 4, 1836, § 11, pro- 
vides " that every patent shall be assignable in law, either 
as to the whole interest, or any undivided part thereof, by 
any instrument in writing; which assignment, and also 
every grant and conveyance of the exclusive right under any 
patent, to make and use, and to grant to others to make and 
use, the thing patented within and throughout any specified 
part or portion of the United States, shall be recorded in the 
Patent Office within th<%e months from the execution thereof, 
for which the assignee or grantee shall pay to the commis- 
sioner the sum of three dollars." 

§ 176. The interest that is thus made assignable by 
statute is undoubtedly assignable at common law. Bat it 
has been deemed proper to regulate the assignment of 
patents by statute. An invention may be assigned for the 
patent before it is taken out, so as to vest in the assignee the 
exclusive interest when the patent has issued ; but the 
application must be made and the specification duly sworn 
to by the inventor, and the assignment must be recorded. 
The interest in a patent may also be assigned by operation 



94 i;aw of patents. 

of law, in case of the bankruptcy of the patentee, as well as 
by his voluntary assignment. There is no question that a 
patent already obtained passes to assignees in bankruptcy ; 
and in England it has been held that a patent issued after 
an act of bankruptcy and an assignment by the commission- 
ers, but before the bankrupt had obtained his certificate, 
passes to the assignees. It is necessary, however, that the 
invention should have been perfected, and, at least, that the 
bankrupt inventor should have applied for a patent. It was 
said, in reference to such a case, that the schemes which a 
man has in his head, or the fruits which he may make of 
them, do not pass ; but if he has carried his schemes into 
effect, and thereby acquired a beneficial interest, that inter- 
est is of a nature to be effected by an assignment in bank- 
ruptcy. Under our system, I conceive that such an inter- 
est would have been acquired, after the application for a 
patent. The party has then done all that the law requires 
for the creation of the interest, and the issue of the patent 
furnishes him with the evidence of his exclusive right. 
Whether an invention perfected and reduced to practice, 
capable of supporting a patent, but for which no application 
had been made for a patent, at the time when the assignment 
in bankruptcy attaches to the bankrupt's effects, would pass 
to the assignees, is a more difficufl; question. The mere 
material in which the invention had been incorporated would 
undoubtedly pass, but this is distinguished from the inven- 
tion itself, which has not become a vested interest under the 
patent law, until the proper application has been made by 
the proper party, who must be the inventor and no one else. 
It would seem that the assignees would not render themselves 
liable to an action for infringement, at the suit of the sub- 
sequent patentee (the bankrupt) for selling such materials, 
as in the case of a newly invented machine, patented after 
the property in the materials had passed to them ; liiit 
whether the purchaser could thus acquire any right, as 
against the inventor, to use those materials in the shape of 



OF ASSIGNMENTS AND LICENSES. 95 

the invention, as intended to be used by the inventor, who 
had used due diligence in obtaining his patent, may admit 
of doubt. 

§ 177. The statute renders it necessary to record the 
assignment in the Patent Office. Three classes or degrees 
of interest by assignment, and no others, are thus required 
to be recorded ; ^rst, an assignment of the whole patent ; 
second, an assignment of an undivided part of the whole 
patent ; and, third, a grant or conveyance of the exclusive 
right under the patent for any specified part or portion of 
the United States. Assignments, of these several classes, 
must be recorded in the Patent Office within three months 
of the execution thereof, to effect intermediate bona fide 
purchasers, without notice. But it has been held that in 
other respects the statute is merely directory, and that any 
subsequent recording will be sufficient to pass the title to 
the assignee. 

^ 178. But the assignee can maintain no suit, in law or 
equity, upon the patent, either as a sole or as a joint plaintifT, 
against third persons, until his assignment has been record- 
ed, according to the requisitions of the statute. For the 
purposes of such a suit, however, it will be sufficient if the 
assignment is recorded at any time before the trial or hear- 
ing. 

§ 179. An assignment vests in the assignee an interest 
in the patent, indefeasible by act of the patentee, so that 
the patentee cannot, by a surrender of his patent, affect the 
rights of an assignee, to whom he has previously granted 
the whole or a part of the patent, without the consent of 
such assignee. In fact, the statute which authorizes a sur- 
render and reissue of a patent, on account of a defective 
specification, expressly saves the rights of assignees in the 
patent, by this clause ; " and in case of his (the patentee's) 



96 LAW OF PATENTS. 

death, or any assignment by him, made of the original 
patent, a similar right (that of surrender and reissue) shall 
vest in his executors, administrators, or assignees." Strictly, 
therefore, an assignee should be a party to the surrender; 
but if he is not, and the surrender is made by the patentee, 
and the patent is reissued to him, it seems that assignments, 
made before the surrender, are not vacated, but the patent 
remains the same, in contemplation of law, and the interests 
of assignees remain the same, without any new assignment. 

§ 180. For a still stronger reason, if the assignee of a 
patent has consented to the surrender, although he is not a 
party on the record of the application at the Patent Office, 
it enures to his benefit and becomes his act, and he is prop- 
erly made a party in any suits brought for infringement 
within the territory covered by the assignment. But the 
assignee or grantee, under the original patent, does not 
acquire any right under the extended patent, which may be 
obtained pursuant to the 18th section of the act of 1836, 
unless such right be expressly conveyed to him by the 
patentee. But assignees, who were in the use of a patented 
machine at the time of the renewal, have still a right to use 
the machine, under the clause of the statute which declares 
that " the benefit of such renewal shall extend to assignees 
and grantees of the right to use the thing patented to the 
extent of their respective interests therein." 

§ 181. When a disclaimer is to be filed, under the 7th 
and 9t.h sections of the Act of 1837, an assignee of the 
whole patent will be the proper party to file it ; and if the 
patent has been previously assigned in part, it has been held 
that the disclaimer will not operate to the benefit of such an 
assignee in any suit by him, at law or in equity, unless he 
joined in the disclaimer. 

§ 182. The distinction between an assignment and a 



OF ASSIGNMENTS AND LICENSES. 97 

license relates to the interest in the patent, as distinguished 
from the right to use the thing patented, or to practise the 
invention. An assignment is a grant in writing of the 
whole or a part of the exclusive right vested in the patentee 
by the patent ; and such a part may be designated as an 
undivided part of the whole patent, extending wherever the 
patent extends, or as a grant of the exclusive right within a 
particular district. Each of these grants may carry with it 
the right to grant to others the power of making and using 
the thing patented, and in no degree diminishes the right 
of the patentee ; it does not per se carry the right to grant 
to others the power of exercising the invention, although it 
may involve the right of selling the specific thing made, 
with the incidental right of using it. Thus when the paten- 
tee sells to another a patented machine, made by himself, 
or permits such person to make the machine, the party thus 
authorized becomes a licensee, with the right of selling the 
machine, which carries with it the right of using it. But 
that party has no interest in the patent ; he cannot authorize 
others to make the machine ; nor does the permission 
extended to him diminish, in any degree, the exclusive right 
of the patentee to make or to authorize others to make the 
patented machine. So, where the subject of the patent is a 
compound or composition of matter, if the patentee author- 
izes another to make and sell the article, that party becomes 
a licensee, with the right of selling the article he may make 
to others, to be used by them, in the way of consumption, 
for the purposes for which it is intended, but he has no 
interest in the patent, and no power to grant to others any 
portion of the exclusive right of making the thing, which is 
vested in the patentee. 

§ 183. Upon this distinction it may often be necessary to 

determine whether a particular instrument amounts to an 

assignment, or only to a license. The statute seems to 

assume and proceed upon the clear distinction, that evpw 

9 



y© LAW OF PATENTS. 

grant which embraces the exclusive right under the patent, 
either as to a part or the whole, is an assignment ; and it 
requires such grants to be recorded. The test to be applied, 
therefore, is, whether the instrument vests in the grantee 
the exclusive right, either for the whole country, or for a 
particular district, of making and using the thing patented, 
and of granting that right to others. If it does so, it is an 
assignment. But if it merely grants a right to make, use, 
and sell the thing patented, whether in limited or unlimited 
quantities, without making that right exclusive, it is a 
license. Thus, where the patentee granted " the right and 
privilege of making, using, and selling the friction matches," 
being the thing patented, and the right "to employ in and 
about the manufacture, six persons, and no more, and to 
vend said matches in any part of the United States," with 
a proviso that nothing herein contained should prevent or 
restrict the patentee from " making and vending the same, 
or of selling and conveying similar rights and privileges to 
others," with a further proviso that the grantee "shall not 
manufacture the said matches in any place within forty 
miles of M. ;" it was held that this was a license or 
authority to make and vend the matches, without any exclu- 
sive right of making them, and consequently did not require 
to be recorded under the statute. The same would be true 
of a grant to make and use a certain number of patented 
machines, in a particular place; but if the covenant were 
that the grantee might make and use ten machines, and 
that he should have the exclusive right of making and 
using the machines in a particular district, limiting him to 
ten, it seems that it would be an assignment, provided the 
grantee were authorized to grant to others the right to make 
and use any of the ten machines. In such a case as this, 
the patentee would have limited the exercise of his own 
privilege to ten machines, and would have granted the 
whole of his privilege, as he had seen fit to limit it, to the 
grantee who would thus have acquired an interest in the 



OF ASSIGNMENTS AND LICENSES, 99 

patent. But if the parties to such au instrument were 
mutually to agree to open the subject of the contract again, 
the patentee might enlarge the exclusive privilege indefinitely 
as to the quantity of machines ; but the relations of the 
parties would still be those of assignor and assignee, as long 
as the exclusive right should be vested in the grantee. 

§ 184. Still, if the grant of an exclusive right to work 
under the patent appears, upon the tenor of the whole instru- 
ment, to have been intended by the parties to operate as a 
license and not as an assignment, it seems that it should be 
so construed ; and such an intention will be evinced by pro- 
visos for determining the license and by the reservation of a 
rent or per centage on the gross sales or manufactures, 
instead of granting an interest in the profits of working the 
patent. But whether such an instrument, conferring the 
exclusive right for a particular district, would amount to an 
assignment, under our statute, or to such a grant as requires 
to be recorded, will further depend, it would seem, upon the 
fact of there being a right vested in the grantee to grant to 
others the " right to make and use the thing patented." 

§ 185. Whether a license is assignable must depend upon 
its terms. A mere license to the party, without mentioning 
his assig?is, is of course nothing more than the grant of a 
power, or the dispensation with a right or remedy, and con- 
fers a personal right upon the licensee which is not trans- 
missible to any other person. It seems, however, that the 
use of the word assigns, in the granting part of such an 
instrument will not necessarily operate to make a license 
assignable, when from the tenor of the whole instrument it 
appears to have been intended as a personal privilege. But 
whether a license is assignable or not, as to the entirety of 
the privilege, it is still more questionable whether it is 
apportionable, so as to permit the licensee to grant rights to 
others to work the patent, by subdividing the rights that may 



100 LAW OF PATENTS. 

have been granted to himself. This question arose in a case 
already referred to, where the patentee of friction matches 
granted to another party the right to make, use, and sell the 
friction matches, and " to have and to hold the right and 
privilege of manufacturing the said matches, and to employ, 
in and about, the same six persons, and no more, and to vend 
the said matches in the United States." The licensee after- 
wards undertook to sell and convey to a third person " a 
right of manufacturing friction matches according to letters- 
patent, &c., in said town of A., to the amount of one right, 
embracing one person only so denominated in as full and 
ample a manner to the extension (extent) of the said one 
right, as the original patentee." It was held that every 
conveyance of this sort must be construed according to its 
own terms and objects, in order to ascertain the true intent 
and meaning of the parties ; and that in this case, the inter- 
est under the license was an entirety, incapable of being split 
up into distinct rights, each of which could be assigned to 
different persons in severalty. 

§ 186. The relations of the patentee and the licensee, 
with regard to the validity and extent of the patent, must 
depend on the terms of the license. The taking of a naked 
license or permission to work under a patent, does not, with- 
out some recitals or covenants amounting to an admission, 
estop the licensee from denying the validity of the patent, or 
the fact of infringement, if he is subsequently proceeded 
against. It is necessary to look into the instrument, and to 
ascertain what recitals and covenants will deprive a licensee 
of the defence to which all other persons may resort. If, by 
his agreement, the licensee has admitted that the process or 
thing which he uses is the patented process or thing, and he 
is afterwards proceeded against for not complying with the 
terms of his agreement, it seems that he will not be at liberty 
to show, that he did not use the patented thing or process. 
So, too, if the deed contain recitals or statements amounting 



OF ASSIGNMENTS AND LICENSES. 101 

to an admission of the validity of the patent, either as to 
the novelty or utility of the supposed invention, or the suffi- 
ciency of the specification, the licensee will be estopped, in 
an action of covenant for the rent or license dues, to deny 
the validity of the patent, by setting up anything contrary 
to the admissions in his deed. In like manner, it has been 
held that a licensee, who has paid an annuity in consideration 
of a license to use a patent privilege, which he has had the 
benefit of, but which afterwards turns out to be void, cannot 
recover back the money he has paid, in an action for money 
had and received. This is upon the ground that the 
licensee has had the benefit of what he stipulated for ; but 
if the patent turns out to be invalid, before a payment 
becomes due, and the license deed contains no admission of 
its validity, the licensee may plead the fact in answer to an 
action of covenant for money reserved by the license. 

§ 187. And where there has been no enjoyment by the 
licensee, who, in an agreement not under seal, has stipulated 
to pay a certain sum for the right to use a patent privilege, 
the invalidity of the patent will be a good plea in bar to an 
action upon the agreement, on the ground of failure of con- 
sideration. The competency of a licensee to dispute the 
validity of a patent is a question which may also arise where 
the licensee is proceeded against for an infringement, on the 
ground that he is using the patent contrary to the conditions 
in his license. If, for instance, a party receives a license to 
use a patented machine, on condition that he pay a stipulated 
sum on all the articles which he may manufacture by means 
of the machine, and after having been put in possession of 
the machine, he uses it, but refuses to pay the rent or license 
dues, or to comply with any other condition, he may be 
enjoined in equity for an infringement. The sole right 
which such a party can have to use the machine depends on 
the license ; and he can use under the license only by com- 
plying with the conditions ; so that his use aside from the 
9* 



102: LAW OP PATENTS. 

license is an infringement. If, in such a case, the licensee 
refuses to pay under the license, or sets up, as a reason for 
not performing any of his covenants, that the patentee has 
not complied with the terms of the contract on his part, will 
the licensee be permitted to question the validity of the 
patent, in any proceeding either at law or in equity, for 
using the patent without right ? This must depend, in the 
first place, upon the admissions in the license deed. If the 
deed contains no admission of the plaintiff's title, then the 
licensee will not be estopped from denying it ; but if it con- 
tains such admissions, and especially, if, after such admissions, 
the licensee has worked under the license, and has paid the 
license dues before his refusal, or if he still continues to 
claim under the deed, and excuses his non-payment by rea- 
son of the non-performance of some covenant on the part of 
the patentee, he will be estopped from denying the validity 
of the patent, and the sole question will be whether he is 
liable for an infringement ; which will depend upon the 
validity of his excuse for not paying, on account of the non- 
performance by the patentee. But, in the second place, if 
the licensee repudiates the contract altogether, and stands 
upon the right of every man to use the alleged invention 
because it is not new, or because the patent is void for some 
other reason, he foregoes all benefit of the license as a per- 
mission to use the invention, and becomes a trespasser. In 
that event, I conceive that his solemn admission under hand 
and seal, of the validity of the patent, may still be used 
against him as an estoppel, both in an action and under a 
bill in equity for the infringement, unless he can show that 
he was deceived and misled, otherwise a party might obtain 
possession of the invention, under a license, and then repudi- 
ate the contract at his pleasure. 



PAET lY 



INFRiNOEMENT, 



THE REMEDY THEREFOR. 



PART IV. 

INFRINGEMENT AND THE REMEDY THEREFOR. 



CHAPTER I. 

INFRINGEMENT. 



§ 188. The statute grants to the patentee, for a term not 
exceeding fourteen years, " the full and exclusive right and 
liberty of making, using, and vending to others to be used, 
the invention or discovery ;" and it gives a right of action 
for damages, in case of " making, using, or selling " the thing 
patented. No definition of what is to constitute an infringe- 
ment is given in the statute ; but, of course, there is an in- 
fringement of the right, when one " makes, uses, or sells a 
thing" which another has the exclusive right of "making, 
using, and vending to others to be used." But what consti- 
tutes making, using, and selling, with reference to the vari- 
ous things that may be the subjects of patents, so as to 
interfere with the exclusive right of the patentee, is left by 
the statute for interpretation. 

§ 189. An infringement takes place whenever a. party 
avails himself of the invention of the patentee, without such 
variation as will constitute a new discovery; or, as it has 
also been stated, an infringement is a copy made after and 
agreeing with the principle laid down in the specification. 



106 LAW OF PATENTS. 

There will be, therefore, different modes in which patents 
may be infringed, according to their subject-matter. Our 
statute has made use of the phrases " making, using, and 
vending to others to be used," to comprehend the exclusive 
right of the patentee ; and consequently the making, using, 
or selling, are the modes in which that right may be in- 
fringed, according to the nature of the subject-matter. We 
are now, therefore, to consider the meaning of these phrases, 
as applied to the infringement of the several classes of things 
which may be the subjects of letters-patent. 

^ 190. 1 , As to a machine. — When a machine is the sub- 
ject of a patent, the patent covers both the machine itself, the 
thing invented, and the mode or process of making it. The 
statute vests in the patentee the exclusive right of making 
it, the exclusive right of using it, and the exclusive right of 
vending it to others to be used. It is, therefore, an infringe- 
ment to make a patented machine, for use or for sale, though 
in fact it is neither used nor sold; it is an infringement to 
use it, though made by another; and it is an infringement 
to sell it, whether made by one's self or by another ; because 
the statute vests the exclusive right of doing all these things 
in the patentee. 

§ 191. The doctrine, that the making of a machine for 
philosophical experiment, or for the purpose of ascertaining 
its sufficiency to produce the described effect, would not be an 
infringement, is founded in the supposition that such a 
making is not injurious to the patentee. It is true that the 
making for the purpose of using becomes directly injurious 
to the patentee, because it deprives him of a purchaser of 
that which he alone is authorized to construct and sell ; and 
it is also true, that when the machine is made by one not 
the patentee, for the mere purpose of experimenting on the 
sufficiency of the specification, no profits are taken away 
from the patentee. There is therefore a difference, undoubt- 



INFRINGEMENT. 



107 



edly, in the tendency of the two acts ; but it is not quite clear 
that the legislature meant to recognize this difference, or 
that they used the words "make," "use," &c., in any other 
than their ordinary sense. The prohibition is express, that 
no other person shall "make," and that no other person 
shall " use ;" and it has been held that the motive of testing 
the practical utility of a machine is no answer to a charge 
of infringement by having " used " it. 

§ 192. It is said that there may be a constructive using 
of a patented machine ; as, if a person were to make a ma- 
chine, in violation of the right of the patentee, or purchase 
it of one who has so made it, and then hire it out to another 
person for use, he might, under some circumstances, be held 
responsible for using it. There is a case, where the plaintiff 
was the patentee of a machine for making watch-chains, 
and it appeared that the defendant had made an agreement 
with one C. to purchase of him all the watch-chains, not 
exceeding five gross a week, which C. might be able to 
manufacture within six months, and C. had agreed to devote 
his whole time and attention to the manufacture of watch- 
chains, and not to sell or dispose of any of them, so as to 
interfere with the exclusive privilege secured to the defendant 
of purchasing the whole quantity which it might be practi- 
cable for C. to make; and it was proved that the machine 
used by C. with the knowledge and consent of the defendant, 
in the manufacture, was the same with that invented by the 
plaintiff, and that all the watch-chains thus made by C. were 
delivered to the defendant according to the contract; the 
Supreme Court of the United States held that if the contract 
were real and not colorable, and if the defendant had no 
other connection with C. than that which grew out of the 
contract, it did not amount to a " using " by him of the 
plaintiff's machine ; but that such a contract, connected with 
evidence from which the jury might legally infer, either that 
the machine which was to be employed in the manufacture 



108 LAW OP PATENTS. 

of the patented article was owned wholly or in part by the 
defendant, or that it was hired by the defendant for six 
months, under color of a sale of the articles to be manufac- 
tured with it, and with intent to invade the plaintiff's patent 
right, would amount to a breach of his right. 

^ 193. It seems to be in accordance with the doctrine of 
this case, to consider that a using of a machine is to be taken 
as proved, either vA'hen the party charged has used it him- 
self, or has employed others to use it for him, or has profited 
by the use of it. 

^ 194. As to the sale of a patented machine, in order to 
be an infringement of the right, it must be something more 
than a sale of the materials, either separate or combined ; it 
must be a sale of a complete machine, for use as a machine, 
which is patented, in order to render the vendor liable for 
an infringement of the patent by a " sale." 



^ 195. The sale of the articles produced, by a patented 
machine, or by a process which is patented, is not an in- 
fringement. 



§ 196. But if the person who sells is connected with the 
use of the machine, he is responsible as for an infringement ; 
and if a court of equity have jurisdiction of the person, such 
a vendor may be enjoined, although the machine may be 
used beyond the jurisdiction of the court. 

§ 197. The Supreme Court of the United States have 
decided that an assignment of an exclusive right to use a 
machine, and to vend the same to others for use, within a 
specified territory, authorizes the assignee to vend elsewhere, 
out of that territory, articles manufactured by such machine. 

^ 198. 2. As to a manufacture or composition of matter. 



mFRINGEMENT. 109 

— Assuming that the word is used in our statute to describe 
the vendible and tangible product of any branch of industry, 
a patent for a " manufacture " will be infringed by the same 
acts as a patent for a composition of matter, that is, by 
making, using, or selling the thing itself. 

§ 199. In cases of this kind, however, some difficulty may 
arise as to what constitutes a using. When the subject- 
matter is the thing produced, the patent will generally also 
cover the process of making it; as in the case of a paint, a 
medicine, a stove, or a fabric of cloth. In these cases, a 
using of the invention would, in one sense, consist in putting 
it in practice. But the statute vests the exclusive right to 
use the thing itself in the patentee, because it is the thing 
produced which is the subject of the patent. Strictly speak- 
ing, therefore, the use of the thing at all, in any form of 
consumption or application, would be an infringement. But 
as the purpose of the law is to prevent acts injurious to the 
patentee, with as little restraint on the public as possible, it 
may be necessary to consider whether the word " using " is 
employed in a limited or an unlimited sense. 

^ 200. Whether the prohibition against using or vending 
a patented composition is to be considered to extend to 
every form of use, so as to give the proprietor a right to 
maintain an action, is worthy of consideration. If a patented 
medicine is made by one not authorized to make it, and is 
sold to a person who consumes it, it would be a somewhat 
inconvenient restraint upoa the public to hold that the latter 
is to be considered as using the invention in the sense of the 
statute. He cannot know that the article is not made by 
the true proprietor; the probability is that he intends to 
purchase the genuine composition, and that he is deceived 
into supposing that he does purchase it. Still, in strictness, 
perhaps he may be held liable to an action for using ths 
thing itself by consuming it. 
10 



110 LAW OF PATENTS. 

§ 201. It would seem, therefore, in regard to all those 
classes of things which perish in the using, that the use by 
which they are consumed may be regarded as a violation of 
the patent right; and that the party may be held responsible 
for using, who sells or gives to others to be consumed, the 
article that is the subject of the patent; because both make 
use of the invention to the injury of the patentee. In such 
cases, it matters not whether the party makes the article 
himself, in violation of a patented process, or procures it to 
be made by others. 

§ 202. Where the subject of a patent is a machine, the 
using it is altogether prohibited by the statute, because it 
intends to vest in the patentee the full enjoyment of the 
fruits of his invention, both in the practice of making the 
machine, and of producing the effect or result intended to be 
produced by it. 

^ 203. Where an order was given to the defendants by a 
third person to manufacture a patented article, on a model 
furnished by him, and the order was executed, it was held 
that the defendants were guilty of an infringement, although, 
when they began to execute the order, they had no knowledge 
of the plaintiff's patent. 

§ 204. 3. A7i Art. — Where an art is the subject-matter 
of a patent, the patent will be infringed by exercising or 
practising the same art, which will constitute a " using " of 
the invention or discovery. 

§ 205. But the great question that arises, when an in- 
fringement is charged to have taken place, is, whether the 
two things, one of which is said to be an infringement upon 
the other, are the same, or different. If they are the same, 
there is an infringement. If they are different, there is not. 
But what kind and what degree of resemblance constitute 



INFRINGEMENT. Ill 

the identity which the patent law considers as an infringe- 
ment, and what kind and what degree of difference will 
relieve from this charge, are the difficult and metaphysical 
questions to be determined in each particular case. 

§ 206. Learned judges have often laid it down that where 
two things are the same in principle, the one is an infringe- 
ment upon the other. This mode of stating the general 
doctrine on which the fact of infringement depends is not 
quite satisfactory, because that which constitutes the principle 
of an invention is very likely to be regarded differently by 
different minds. Still, there is a sense in which the principle 
of an invention is undoubtedly to be considered in determin- 
ing whether an infringement has taken place ; because we 
cannot determine whether there is a substantial identity 
between two things, without first observing the distinguish- 
ing characteristics of the one which is taken as the subject 
of comparison. But I propose, without rejecting the light 
of any of the cases in which this language is employed, to 
inquire whether the fact of an infringement may not be tried 
by a test more definite, precise, and practical. 

§ 207. An infringement involves substantial identity, 
whether that identity is described by the terms " same prin- 
ciple," same " mode of operation," or any other. It is a 
copy of the thing described in the specification of the pa- 
tentee, either without variation, or with only such variations 
as are consistent with its being in substance the same thing. 
What will amount to such a substantial identity cannot be 
stated in general terms ; we can only look to individual 
cases for illustrations and applications of the general doctrine. 

§ 208. If the invention of the patentee be a machine, it 
will be infringed by a machine which incorporates in its 
structure and operation the substance of the invention; that 
is, by an arrangement of mechanism which performs the 



112 LAW OF PATENTS. 

same service, or produces the same effect in the same way, 
or substantially in the same way. 

^ 209. But if the difference between the two machines is 
not a mere difference of form ; if there is a material alteration 
of structure ; if they are substantially different combinations 
of mechanism, to effect the same purpose by means which 
are really not the same in substance, then the one will not 
be an infringement of the other. 

§ 210. But, in cases where a patent is not for a combina- 
tion, if the principle is applied in the same way as the 
patentee has applied it, then the absence of two or three 
things in the defendant's machine, which are mentioned in 
the specification, will not prevent the patentee from recover- 
ing for an infringement. It is in relation to this question 
of substantial identity that the doctrine of mechanical 
equivalents becomes practically applicable. This doctrine 
depends upon the truth that the identity of purpose, and not 
of form or name, is the true criterion in judging of the simi- 
larity or dissimilarity of two pieces of mechanism. The 
question whether one thing is a mechanical equivalent for 
another, is a question of fact for the jury, on the testimony 
of experts, or an inspection of the machines ; and it is an in- 
ference to be drawn from all the circumstances of the case, by 
attending to the consideration, whether the contrivance used 
by the defendant is used for the same purpose, performs the 
same duties, or is applicable to the same object, as the con- 
trivance used by the patentee. Hence, two things may be 
mechanical equivalents for each other under some circum- 
stances, which would not be so under different circumstances. 
Hence, also, the names as well as the forms of things are 
of comparatively little importance. The question to be 
determined is, whether, under a variation of form, or by the 
use of a thing which bears a different name, the defendant 
accomplishes, in his machine, the same purpose, object, or 



INFRINGEMENT. 113 

effect, as that accomplished by the patentee ; or whether 
there is a real change of structure and purpose. 

^ 211. If the change introduced, by the defendant consti- 
tutes a mechanical equivalent, in reference to the means 
used by the patentee, and besides being such an equivalent, it 
accomplishes some other advantage beyond the effect or pur- 
pose accomplished by the patentee, it will still be an infringe- 
ment as respects what is covered by the patent, although 
the further advantage may be a patentable subject as an 
improvement upon the former invention. 

^ 212. Where the subject-matter of the patent is a manu- 
facture, the same test of substantial identity is to be applied. 
In many cases of this kind, it will not be by varying in form, 
or in immaterial circumstances, the nature of the article, or 
the process by which it is produced, that a party can escape 
the penalties of infringement. The question will be, 
whether in reality and in substance the defendant has 
availed himself of the invention of the patentee, in order to 
make the fabric or article which he has made. If he has 
taken the same plan and applied it to the same purpose, 
notwithstanding he may have varied the process of the 
application, his manufacture will be substantially identical 
with that of the patentee. 

§ 213. But in regard to another class of cases, it not un- 
frequently happens, that the sole evidence of infringement 
consists in the similarity of the articles, without any direct 
evidence of their having been made by the same process. 
Similarity in appearance and structure will not of itself 
always establish an infringement ; because the patent, 
though it covers the manufactured article itself, may be for 
the process of the manufacture. In such cases, the infer- 
ence that the same process was used must be drawn from 
the evidence ; and the similarity of structure of two things 
10* 



114 LAW OF PATENTS, 

is presumptive evidence of their being made in the same 
way. 

^ 214. la such cases, virhere the object to be accomplished 
is open to the public, notwithstanding- the patent, provided 
it can be accomplished in several modes, which, as processes, 
are substantially different, an infring-ement must be in 
respect of the process used by the patentee. But unless it 
appears that the article itself could be produced by another 
process, constituting an independent discover}'', then an 
infringement may be proved by the making of the article. 
The burthen of proof is always on the plaintiff, to show that 
his process has been infringed ; and, in the absence of direct 
evidence, the similarity of the effect produced will generally 
be sufficient to establish an infringement, and if this is aided 
by evidence of the use of similar apparatus, the presumption 
of a use of the same process will be still stronger. Or, to 
state this in other words, where the invention or subject- 
matter of the patent is a manufacture, it is immaterial by 
what process it is produced,* since the infringement must 
consist in making the same thing, whether by one process or 
another. But where the invention or subject-matter is the 
process of making a particular thing, which may or may 
not be made by more than one process, the inquiry will be 
whether it has been made by the use of the process covered 
by the patent. In such cases, the identity of the manufac- 
tured article is, with all the other circumstances, competent 
evidence, from which the jury are to infer that it was made 
by the process of the patentee • although there may be 
cases, where, from the nature of the article, this proof would 
be less strong, according as it appeared to be possible or 
probable that the article could be made by more than one 
process. The burthen of proof of the infringement is upon 
the plaintiff throughout ; and although it does not appear 
that the article could be made by another process, the jury 
must still draw the inference, from the identity of the 



INFRINGEMENT. 115 

manufacture, if that is all the evidence, or from that and the 
other evidence, that it was made by the patentee's process, 

^ 215. But a much more difficult class of cases arises 
under those patents where the subject-matter is the applica- 
tion of a principle, by means of a process or method, in 
order to produce a particular effect. We have already had 
occasion to consider when such an invention or discovery is 
the proper subject-matter of a patent. We have seen that, 
under some circumstances, the discovery of a principle may, 
by application in the arts, be protected by a patent ; and we 
have now to consider how far the proprietor of such a 
patent may protect himself against the use of the same 
principle by others ; or, in other words, what will constitute 
an infringement of his right. 

§ 216. In this inquiry, the first thing to be attended to is 
the subject-matter of the patent. A clear idea is to be 
formed of the object of the patent; and provided the 
specification properly points out what the claim of the paten- 
tee is, it is not material in what form his claim is presented, 
or whether, in form, the patent purports to be for a process 
or a manufacture. Wherever the real subject covered by 
the patent is the application of a principle, in arts or manu- 
factures, the question, on an infringement, will be as to the 
substantial identity of the principle, and of the application 
of the principle ; and consequently the means, machinery, 
forms, or modifications of matter, made use of, will be 
material, only so far as they affect the identity of the appli- 
cation. 

^ 217. Thus, in Forsyth's patent, the subject-matter was 
the use and application of detonating powder as priming, for 
the explosion of gunpowder; and it was held that whatever 
the construction of the lock by which the powder was to be 
discharged, the use of detonating mixture as priming was an 



116 LAW OF PATENTS. 

infringement. So, too, where the claim, of the patentee was 
for " the application of a self-adjusting- leverage to the back 
and seat of a chair, whereby the weight and the seat act as 
a counter balance to the pressure against the back of such 
chair," it was held that a chair made in any way upon this 
principle was an infringement. In like manner, where the 
principle of the invention was the welding of iron tubes by 
pressure of the edges of the iron, when heated, without the 
use of a maundrill, or other internal support, it was held that 
a variation from the plaintiff's mode of applying the press- 
ure, the application of the principle being the same, was 
still an infringement. 

^ 218. Clegg's patent was for the application of a law of 
natural science respecting the motion of fluids and solids, 
and the alternate filling and discharging of a vessel of gas, 
by means of that application ; the object being to obtain an 
instrument for measuring the quantity of gas supplied to the 
consumer. The scientific witnesses said, that the moment 
a practical scientific man had got that principle, he could 
multiply without end the forms in which it could be made 
to operate. The instrument used by the defendant was 
different in form and construction from that used by the 
patentee ; but the application of the principle, by means of 
a varied apparatus, was the same in both ; and it was held 
an infringement. 

^ 219. In Neilson's patent, the invention consisted in the 
application of hot air to the blowing of furnaces, by heating 
the air between its leaving the blowing apparatus and its 
introduction into the furnace, in any way, in a close vessel, 
exposed to the action of heat. The defendant's apparatus 
for this purpose was confessedly superior to what would be 
constructed according to the directions in the plaintiff's 
specification ; but it was held to be an infringement. 



INFRINGEMENT. 117 

^ 220. These cases show that when a party has invented 
some mode of carrying into effect a law of natural science, 
or a rule of practice, it is the application of that law or rule 
which constitutes the peculiar feature of his invention ; that 
he is entitled to protect himself from all other modes of 
making the same application ; and, consequently, that every 
question of infringement will present the question, whether 
the different mode, be it better or worse, is in substance an 
application of the same principle. The substantial identity, 
therefore, that is to be looked to, in cases of this kind, 
respects that which constitutes the essence of the invention, 
viz., the application of the principle. If the mode of carry- 
ing the same principle into effect, adopted by the defendant, 
still shows only that the principle admits of the same appli- 
cation in a variety of forms, or by a variety of apparatus, 
the jury will be authorized to treat such mode as a piracy 
of the original invention. But, of course, where the varia- 
tions adopted by the defendant show that the application of 
the principle is varied, that some other law or rule of 
science, or of practice, is made to take the place of that 
which the patentee claims as the essence of his invention, 
then there will be no infringement, but a substantial inven- 
tion. 

^ 221. And this brings us to the consideration of another 
test of the fact of infringement, viz., that which shows on 
the part of the defendant a substantive invention sufficient 
to support a patent, as for a new thing. 

^ 222. There may be many different modes of obtaining 
the same object, and, consequently, if, after a patent has 
been obtained for a particular thing, another party, without 
borrowing from that patent, has invented a new mode of 
accomplishing the same object, he will be entitled to a 
patent for his discovery. The fact that a party is entitled 
to a patent for a substantive invention, becomes a test of his 



118 LAW OF PATENTS. 

infringement of a prior patent in this way. He cannot have 
become entitled to a patent without the invention of some- 
thing material and new, that goes to the essence and sub- 
stance of the subject-matter. If what he has done is only to 
make a variation in certain particulars, which do not affect 
the principle of the invention, the subject-matter remains 
the same, notwithstanding such variation. But if he has 
produced a new subject-matter, whether it be in the mode 
of accomplishing a common object, or in the object itself, he 
has not infringed upon the subject-matter of another which 
was materially and essentially different. 

^ 223. The application of this test is seen in a striking 
manner in the facts of a recent English case. The plaintifT 
had obtained a patent for " an invention of improvements in 
cards, for carding wool, cotton, silk, and other fibrous sub- 
stances, and for raising the pile of woollen cloths." In his 
specification, he stated his invention to consist in " the 
application and adaptation of caoutchouc or India rubber as 
a substitute for the fillets or sheets of leather that were 
commonly used in the construction of ordinary cards, and 
thus giving a superior elasticity and durability to cards ;" 
and, in describing the mode of preparing the article, stated that 
"the regularity of distance and uniformity of the dents or 
teeth of the cards were found to be better preserved by a piece 
of linen commonly called brown holland, or other like cloth, 
well glazed and cemented on to the back of the caoutchouc 
or India rubber;" that "the cloth so placed rendered the action 
of the dents or teeth less uncertain in their elastic movements ; 
that the cloth so cemented to the India rubber or caoutchouc 
was to be affixed to the cylinder or board of the ordinary 
carding engine by nails ; but if it was to be affixed by 
cementing, (which he recommended as the best mode of 
applying the cards,) then it was desirable to remove the 
cloth ;" and he then proceeded to show the ordinary mode 
of pricking or piercing holes for the reception of the dents or 



INFRINGEMENT. 119 

teeth, the mode of cutting the India rubber, &c. The 
defendants subsequently obtained a patent also for "an 
improvement or improvements in cards for carding various 
fibrous substances, part of which improvements may be used 
as a substitute for leather;" and in their specification they 
stated their invention to consist in the manufacture of a new 
material or substance for receiving the wire teeth, which 
they described to be a woven fabric of a peculiar construc- 
tion, soft and porous, saturated w^ith a solution of India 
rubber by being repeatedly passed through it, and then dried 
and submitted to pressure ; the object being to render the 
fabric so dealt with " extremely elastic in the direction of 
the thickness of the fabric, so as to impart, as it were, elastic- 
ity to the wire teeth when set," 

§ 224. The question as to the infringement was, whether 
the defendants had added anything material, not covered by 
the plaintiff's patent, which could be considered as constitut- 
ing a subject-matter distinct from that of the plaintifl^s. It 
appeared that the difference between the article manufactured 
under the plaintiff^'s patent, and that under the defendant's 
patent, which was complained of as an infringement, was, 
that in the former the caoutchouc or India rubber was 
cemented in slices cut from the solid block to linen cloth, or 
cloth made of linen and cotton, in the manner described in 
the plaintiff''s specification, and that the latter consisted of 
cloth of a peculiar fabric saturated or impregnated by passing 
it through a liquid composed of caoutchouc or India rubber 
dissolved in naptha or oil of turpentine and highly rectified 
coal tar oil, and afterwards drying and submitting it to 
pressure. The plaintiff's evidence tended to show that the 
article made by the defendants was a colorable imitation of 
that made under the plaintiff^'s patent ; the cloth being 
merely placed in the centre between two strata of India 
rubber or caoutchouc, instead of at the back, and the India 
rubber, though applied in solution or in the form of a cement, 



•120 LAW OF PATENTS. 

being capable of being reproduced by evaporation of the solv- 
ent, and the principle and the result of both methods being 
the same, viz., the acquisition of an increased elasticity, 
though the modes of attaining that result were somewhat 
different. It was also sworn, that, for the purpose of the 
plaintiff's patent, caoutchouc or India rubber might be used 
either in the state in which it is imported, or in a manufac- 
tured state, that is, dissolved by certain known solvents, and 
afterwards, by evaporation of the solvents, restored to solid 
blocks ; but that, if free from air-holes, (in which state it was 
possible to obtain it,) it was more desirable to have it in its 
natural state, its elasticity being somewhat diminished by 
the artificial process. 

^ 225. On the part of the defendants, several witnesses, 
as well practical as scientific, were called, who stated that 
the principle of the manufactures respectively described in 
the specifications of the plaintiff and defendants was essen- 
tially different, as well in the materials used and the mode 
in which they were put together, as in the operation or result 
of their combination ; the one process being wholly mechani- 
cal, the other strictly chemical, and the effect of the former 
being to give elasticity, and of the latter to give strength and 
JlexilAlity or pliancy, but imparting only a very slight addi- 
tional elasticity to the card : that the proportion which the 
India rubber bore to the cloth as used by the plaintiff was 
generally about three to one, whereas the proportion of India 
rubber solution used by the defendants w^as from twenty to 
forty per cent, only; and that India rubber as imported was 
wholly unfit for the purpose described in the plaintiff's 
specification, never being sufficiently free from imperfection. 

^ 226. Upon the issue of not guilty, the jury found a 
verdict for the plaintiff, thereby establishing that the defend- 
ant's card was an infringement of the plaintiff's, both 
employing the elasticity of caoutchouc next the teeth, and 



INFRINGEMENT. 121 

the defendant's practising by a circuitous mode that which 
falls within the claim of the plaintiff's patent. 

^ 227. But, if the defendants, in this case, could have 
succeeded in showing that the materials of which they made 
their cards, and the mode in -which they were put together, 
were different from the materials and method of construction 
used b)'- the plaintiff; if they could have satisfied the jury 
that the difference expressed by saying that the one process 
was mechanical and the other chemical was a real and 
substantial, and not a colorable, difference ; then they would, 
notwithstanding the former patent of the plaintiff, and not- 
withstanding that the objects of both were the same, have 
appeared to be the authors of a substantive invention, because 
they would have produced a distinct subject-matter, new in 
all material respects, of a useful character, and, therefore, 
capable of supporting an independent patent. But it ap- 
peared that the plaintiff's patent covered the use of India 
rubber combined with cloth, as a fillet or sheet, for the backs 
of cards, in which to insert the teeth, in order to accomplish 
certain purposes ; and that the mode in which the defendants 
brought these same materials into combination, for the same 
purposes, was only a circuitous mode of doing what the 
plaintiff had done, and therefore that they had produced 
nothing new, material to the principle and substance of the 
invention. 

§ 228. On the other hand, where the plaintiff had a patent 
for producing an effect in the manufacture of iron, said to be 
altogether new, by a mode or process, or series of processes 
unknown before, it being for a combination of processes 
altogether new, leading to one end; and the defendants had 
used the same ingredients, but in different proportions, which 
constituted a mode of working essentially different from that 
pointed out in the specification, it was held that there was 
no infringement. The plaintiff's invention in this case 
11 



122 LAW OF PATENTS. 

consisted in rendering available the slags or cinders produced 
in the manufacture of iron ; and also in the use and applica- 
tion of lime, subsequent to the blast furnace, in order to 
prevent the quality called "cold short;" and his specifica- 
tion pointed out the proportion of slags, mine rubbish, coke 
and limestone, to be used for the production of the effect. 
To prove the infringement, a witness in the employ of the 
defendants was called, who stated that he had seen the 
plaintiff's specification; that since the date of the patent the 
defendants preserved cinders, which they had not done 
before, and produced pig-iron, by mixing them with mine 
rubbish, and that in the subsequent processes they applied 
quick-lime to prevent the iron from being " cold short." 
But he stated that the defendants did not work by the plain- 
tiff's specification, but used very different proportions, viz., 
lime in the refinery furnace in about the proportion of one 
hundred and twentieth part to the whole charge of pig-iron, 
and that they used none in the puddling furnace, and that 
the defendants had used slags in the puddling furnace for 
years before the date of the patent. He also proved that 
the proportions of mine rubbish, as laid down in the specifi- 
cation, were not essential to the success of the process ; that 
the defendants had been in the habit of varying those pro- 
portions, and that they once entirely omitted mine rubbish, 
when the result was most successful. 

^ 229. Now, this patent was one of that class in which 
proportions or degrees, when specified as the mode in which 
a particular effect is to be produced, make a part of the 
essence of the invention. A discovery may consist in the 
effect produced by the union of certain ingredients or agents : 
but if a particular proportion is supposed to be necessary to 
the effect, and is claimed as entering into the production of 
that effect, the subject-matter of the patent will be the use 
of the particular ingredients in that particular proportion ; 
and if the same ingredients in different proportions, or a part 



INFRINGEMENT. 123 

of the same ingredients in other proportions, are used hy 
another person to produce a similar beneficial effect, more or 
less advantageous, that person will have discovered a new sub- 
ject-matter, and consequently will not have infringed the right 
of a patentee whose invention depends on the proportions 
which he has specified. Accordingly, it was held in this 
case that, the defendant^,^ mode of working being essentially 
different from the specification of the plaintiff, they had not 
infringed his patent ; and if we apply to the reasoning of the 
court the test of a sufficiency of invention on the part of the 
defendants to support a patent, as for a new discovery, it will 
be seen that the same facts will lead to that result, which 
show that the plaintiff's patent had not been infringed. 

§ 230. The superior utility of one thing over another will 
sometimes furnish an important test upon this question of 
identity. It is not always true that one machine, for 
instance, is not an infringement upon another, because it is 
better than the other; for it may contain the whole sub- 
stance of that other machine, and something in addition 
which makes it better; or the patent may have been taken 
for an entire machine, substantially new in its structure, and 
the machine complained of may contain some substantial 
operating part of the machine patented, and so infringe. 
But where the patent is for some one operating part of a 
machine, designed to effect a particular end, and the machine 
complained of effects that end materially better, by the use 
of means which are in point of fact different, then the two 
modes of operation are not the same under the patent law. 
In other words, when the means employed are, in point of 
fact, not the same, or a known mechanical equivalent, and the 
question to be determined is, whether they are, under the 
patent law, the same in substance, or, as it is usually called, 
the same in principle, superior utility settles that question. 
Two things are not the same under the patent law, when 
one is practically substantially better than the other, and 



124 LAW OF PATENTS. 

this improvement is not gained by the use of known mechan- 
ical equivalents. 

^231. This view of the patent law relieves it in a great 
degree from the uncertainties which have arisen from the 
loose and indeterminate sense in which the word " princi- 
ple " has been employed ; and, at the same time, it is in 
exact accordance with the great purposes, as well as with the 
particular provisions, of that system of law. Its leading 
purpose was to encourage useful inventions. Practical utility 
was its object ; and it would be strange, if, with such object 
in view, it should consider two things as substantially the 
same, which, practically and in reference to their respective 
utility, are substantially different. And although this test 
has not seldom been lost sight of, in the trial of patent 
causes, yet there is nowhere any authority opposed to it, 
and there is certainly much in its favor. 

^ 232. Every patent stands upon its subject-matter, and 
accordingly the question of infringement depends upon the 
use of that which is covered by the patent. A patent may 
be for a new combination, whether the particular parts or 
things constituting that combination be new or old. But 
where the patent is for a combination, and not for several 
and distinct improvements, it is no infringement to use any 
of the parts or things which go to make up the combination, 
if the combination itself be not used. 

^ 233. But, on the other hand, where the patent is for 
several distinct improvements or things, and does not stand 
upon the combination of such things, then the use of any 
one of them will be an infringement. But in order to suc- 
ceed in an action for the infringement of any one of such 
improvements, it was formerly necessary with us, as in Eng- 
land, that the whole of the improvements claimed as such 
should be new; and if the novelty of any one of them 



INFRINGEMENT. 126 

failed, though it might not be the one used by the defendant, 
the action could not be sustained. The reason for this was, 
not that the right of the patentee would not have been 
infringed, if he had had a valid patent, but that his patent 
was void, on account of a partial failure of the whole con- 
sideration on which it was granted ; the consideration on 
which a patent was granted being the novelty of all the 
things represented to be new, regarded as an entirety; and 
the consideration being entire, if it failed in part, it failed as 
to the whole. The government was, in such a case, deceived 
in its grant; the whole patent was therefore inoperative, 
and no action could be maintained upon it. 

§ 234. The statute of July 4, 1836, § 15, recognizes this 
doctrine, by establishing as a defence that the patentee was 
not the first inventor of the thing patented, " or of a sub- 
stantial and material part thereof claimed as new." But a 
more recent statute has provided that " the patent shall be 
deemed good and valid for so much of the invention or 
discovery as shall be truly and bona fide the invention or 
discovery of the patentee, if it is a material and substantial 
part of the thing patented, and is definitely distinguishable 
from the other parts which the patentee had no right to 
claim, notwithstanding the specification may be too broad, if 
it was so made by mistake, accident or inadvertence, and 
without any wilful default, or intent to defraud or mislead 
the public." This leaves the former doctrine, by which a 
failure of novelty in any part vitiated the whole patent, still 
applicable to cases where the claim was made too broad, 
wilfully and knowingly, or with intent to defraud or deceive 
the public. 

§ 235. The effect of a failure, in point of utility of one or 
more of several parts or things claimed as distinct inven- 
tions, is held in England to be the same as a failure in point 
of novelty. If anything claimed as essential turn out to be 
11* 



rdb LAW OP PATENTS. 

useless, the patent is voidable, provided it was known to the 
patentee, at the time of enrolling his specification, to be 
useless, because he misleads the public by representing it to 
be useful ; but if it was subsequently discovered not to be 
useful, material, or necessary, it forms no ground of objec- 
tion to the patent. A patent for an entire machine, or other 
subject which is, taken altogether, useful, though a part or 
parts may be useless, will be valid, provided there is no false 
suggestion. So, too, a finding of the jury, that the invention 
is useful on the whole, but fails or is not useful in some 
cases, is not a ground of nonsuit. But these cases are 
entirely distinguished from those where the purpose wholly 
fails, and the invention described does not accomplish the 
effect that is claimed for it. On a patent of this description, 
of course, no action whatever can be maintained. 

§ 236. The principles of our law would apparently lead 
to the same conclusions upon this subject; for although it is 
not material whether the subject-matter of a patent is more 
or less useful, it must possess some utility ; and if the sub- 
ject-matter consists of several things, all included in one 
patent, but claimed as the distinct inventions of the patentee, 
a failure of any one of them, in point of utility, must vitiate 
the patent, if it was represented to be useful, when it was 
known not to be so, for the same reasons which are applica- 
ble in England. Our statute, moreover, has expressly pro- 
vided, as one of the defences to an action on a patent, " that 
it contains more than is necessary to produce the described 
effect," when such addition " shall fully appear to have been 
made for the purpose of deceiving the public ;" that is to 
say, when it appears that the patentee was aware that he 
was introducing something not useful, material, or necessary, 
at the time of preparing his specification. 

§ 237. The rule of damages for the infringement of a 
patent is provided by statute in the following terms : " that, 



INFRINGEMENT. 127 

whenever in any action for damages for using or selling the 
thing whereof the exclusive right is secured by any patent 
heretofore granted, or which shall hereafter be granted, a 
verdict shall be rendered for the plaintiff in such action, it 
shall be in the power of the court to render judgment for 
any sum above the amount found by such verdict as the 
actual damages sustained by the plaintiff, not exceeding 
three times the amount thereof, according to the circum- 
stances of the case." By the terms "actual damages, sus- 
tained by the plaintiff," are meant such damages as he can 
actually prove, and has in fact sustained, as contra-distin- 
guished from mere imaginary or vindictive damages, which 
are sometimes given in personal torts. These damages will 
be trebled by the court, according to the statute. 

§ 238. In estimating the " actual damage," the rule is, in 
cases of infringement by an actual use of the plaintiff's 
invention, — as by making and using a patented machine, — 
to give the value of such use during the time of the illegal 
user, — that is to say, the amount of profits actually received 
by the defendant. To this, it seems, there should also be 
added all the losses to which the plaintiff has been subjected 
by the piracy. 

§ 239. But where merely the making of a patented 
machine is proved, as no actual damages have been sus- 
tained, nominal damages only should be given. 

^ 240. Where patented articles (cast-iron water-wheels) 
were manufactured by the defendants on an order given by 
a third person, and the order was partially executed before 
the defendants had notice of the patent, and two wheels only 
were cast after notice, it was held that nominal damages 
only were proper. 

§ 241. It was formerly doubted, whether the jury were 



128 LAW OF PATENTS. 

at liberty to allow, as part of the actual damage, the counsel 
fees and expenses of witnesses beyond the taxable costs, 
incurred by the plaintiff in vindicating his right. But it is 
now the established rule and practice to allow them. 

§ 242. As to the time of the acts complained of as 
amounting to an infringement, it is obvious that the patent 
cannot be infringed by anything done when the patent did 
not exist ; and therefore it is no infringement to make or use 
a machine subsequently patented, or otherwise to practise 
the invention which is afterwards made the subject of a 
patent, before the patent is obtained. But when a patent is 
granted, the right in the subject-matter relates back to the 
time of the invention, so that the party who has practised 
the invention between the time of the discovery and the 
issuing of the patent must cease to do so. Any acts of 
infringement done after the issuing of the patent will be 
ground for the recovery of damages, although the previous 
acts were done at a time when it was uncertain whether 
there would be any patent issued. The same is true of acts 
done in violation of a patent which is surrendered and 
renewed on account of defects in the specification. If a 
party erect and put in use a patented machine during the 
existence of a defective patent which is afterwards surren- 
dered, it will be an infringement of the new and renewed 
patent, if he continues the use of such machine after the 
renewal; and it seems that no notice of the renewal is 
necessary; and if it is, that knowledge of the original 
patent will be notice of the renewed patent granted in con- 
tinuation of it, according to the provisions and principles of 
law. 

§ 243. A patentee may recover damages for an infringe- 
ment during the time which intervened between the destruc- 
tion of the Patent Office by fire, in 1S36, and the restoration 
of the records under the act of March 3, 1837. 



CHAPTER II. 

OF THE REMEDY FOR AN INFRINGEMENT BY ACTION AT LAW. 

§ 244. The Act of Congress of July 4, 1836, c. 357, 
§ 14, provides that damages may be recovered for an 
infringement by " an action on the case " ; a remedy which 
exists equally at common law for the violation of the right 
secured by letters-patent. 

§ 245. I. Parties. The statute also provides that " the 
action shall be brought in the name or names of the person 
or persons interested, whether as patentee, assignees or as 
grantees of the exclusive right within and throughout a 
specified part of the United States," 

§ 246. Formerly, the grantee for a particular district 
could not bring an action on the patent in his own name. 
But the statute has made him a party interested in the 
patent, and consequently, in his own district, he may sue in 
his own name. 

§ 247. Where the patentee has assigned his whole inter- 
est, either before or after the patent was taken out, the action 
can only be brought in the name of the assignee ; but where 
the assignment is of an undivided part of the interest, the 
action should be brought in the joint names of the patentee 
and the assignee, as representing the whole interest. If the 
assignment has not been made, but has been merely agreed 
to be made, the action should be in the name of the patentee, 
the assignee not having the interest until the assignment 
has been made and recorded. But it may be recorded at 



130 LAW OF PATENTS, 

any time after the suit is brought and before trial. An 
action for an infringement may be maintained against a 
corporation. 

§ 248, The Supreme Court of the United States have 
held that a covenant by a patentee, made prior to the law 
authorizing extensions, that the covenantee should have the 
benefit of any improvement in the machinery, or alteration 
or renev.'al of the patent, did not include the extension by 
an administrator under the act of 1836 ; that it must be 
construed to include only renewals obtained upon the sur- 
render of a patent on account of a defective specification, 
and, therefore, that a plaintiff who claimed under an assign- 
ment from the administrator could maintain a suit against a 
person who claimed under the covenant. 

§ 249, II, The Declaration. The declaration, in an action 
for the infringement of a patent, should show a title in the 
plaintiff, with convenient certainty ; and should set forth all 
the matters which are of the essence. Without these 
allegations, the plaintiff fails to show a right in point of law 
to ask the court for judgment in his favor. The several 
parts of the declaration may here be considered, in the order 
in which they occur in pleading. 

§ 250. The declaration should commence with a recital 
that the plaintiff was "the original and first inventor" of 
the subject-matter, the making, using, or vending of which 
is complained of. This averment is necessary, notwith- 
standing the letters-patent, afterwards referred to, recite that 
the plaintiff has alleged that he was the original and first 
inventor, because it must appear affirmatively, in point of 
fact, at the trial, that he vi^as so, and the letters-patent can 
only be resorted to as prima facie evidence of the fact. 
There must, therefore, be a distinct allegation of the fact, as 
one of the things essential to the plaintiff's title. 



EEMEDY FOR INFEINGEMENT BY ACTION AT LAW. 131 

§ 251. For the same reason, the declaration goes on to 
aver that the subject-matter was " new and useful," " not 
known or used before the plaintifT's mvention or discovery," 
and " not at the time of his application for a patent in public 
use or on sale with his consent or allowance." 

§ 252. Whether it is necessary to aver the citizenship of 
the patentee has never been determined. In practice it is 
generally done, and it is safer to do so than to omit an aver- 
ment which might on demurrer be held to be essential. But 
it is absolutely necessary to aver that the plaintiff, being the 
original and first inventor, obtained letters-patent for his 
invention, in due form of law, under the seal of the patent 
office, signed by the Secretary of State, and countersigned 
by the Commissioner of Patents. 

§ 253. The substance of the grant should then be set 
forth ; that is to say, that the letters-patent secured to the 
plaintiff, his heirs, administrators, &c., for the term of four- 
teen years, the full and exclusive right of practising the in- 
vention ; which should be described briefly, as it is set forth 
in the letters-patent, of which profert should be made. 
Where the declaration describes the plaintiff's invention in 
the words of the patent, it is not necessary that the descrip- 
tion, as stated in the specification, should be set forth. If 
the defendant require the specification in his defence, he 
may have it placed on the record by praying oyer of it. 

§ 254. The declaration is concluded by an averment of 
the value of the patent right and of the breach by the 
defendant, and the damages sustained by the plaintiff. 

^ 255. If the plaintiff sues in the character of assignee of the 
patent, he must set forth both the patentee's title and his own, 
and should aver that the assignments were duly recorded in 
the patent office. If the declaration omit to state that the 



132 LAW OF PATENTS. 

assignments were recorded, the omission will be cured by- 
verdict, if the general terms of the declaration are otherwise 
sufficient to have authorized the admission of proof of the 
recording at the trial ; upon the general principle, that, after 
verdict, all the facts necessary to have been proved to enable 
the jury to find a verdict for the plaintiff will be presumed 
to have been proved, if the general terms of the declaration 
would have let them in. 

^ 256. At the trial, proof may be given of the recording of 
an assignment, either before or after the action was brought. 

§ 257. III. Pleadings and Defences. The fifteenth sec- 
tion of the Act of 1836 provides that the defendant, in any 
action for the infringement of a patent, shall be permitted to 
plead the general issue, and to give the statute and any 
special matter in evidence, of which notice in writing may 
have been given to the plaintiff or his attorney, thirty days 
before trial, tending to prove that the description and speci- 
fication of the patent does not contain the whole truth rel- 
ative to the invention or discovery, or that it contains more 
than is necessary to produce the described effect ; which 
concealment or addition shall fully appear to have been made 
for the purpose of deceiving the public ; or that the patentee 
was not the original and first inventor or discoverer of the 
thing patented, or of a substantial and material part thereof 
claimed as new, or that it has been described in some public 
work anterior to the supposed discovery by the patentee, or 
had been in public use, or on sale, with his consent or allow- 
ance, before his application for a patent, or that he had sur- 
reptitiously or unjustly obtained a patent for that which was 
in fact invented or discovered by another, who was using 
reasonable diligence in adapting and perfecting the same ; 
or that the patentee, if an alien at the time the patent was 
granted, had failed and neglected, for the space of eighteen 
months from the date of the patent, to put and continue on 



REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 133 

pale to the public, on reasonable terms, the invention or dis- 
covery for which the patent issued ; in either of which cases 
judgment is to be rendered for the defendant, with costs. 

^ 258. The object of this provision was to enable the de- 
fendant to give certain special matters in evidence under the 
plea of the general issue. It seems to have been generally- 
supposed, at a very early period in the history of our legis- 
lation, that under a plea of the general issue, the defendant 
could not be allowed to attack the validity of the patent, and 
that that plea only put in issue the question of infringement. 
Accordingly, the Act of 1793, ^ 6, enumerated certain special 
defences, which it declared the defendant "shall be permit- 
ted " to give in evidence under the general issue, by first 
giving notice thereof to the plaintiff. The Supreme Court 
of the United States construed the provision as intended to 
relieve the defendant from what were supposed to be the 
difRculties of pleading, by allowing him to give in evidence, 
under the plea of not guilty, certain matters affecting the 
patent, providing, at the same time, for the security of the 
plaintiff against surprise, by requiring notice to be given of 
the special matter to be relied on. This notice was substi- 
tuted for a special plea. The court also declared that the 
defendant was not obliged to pursue this course. He might 
plead specially, in which case the plea would be the only 
notice the defendant could claim ; or he might plead the 
general issue, in which case he must give notice of the 
special matter on which he relied. 

§ 259. The fifteenth section of the Act of 1836 is taken, 
with some additional defences, from the sixth section of the 
Act of 1793, and has the same object in view. It differs 
from the former act, by omitting the provision that the patent 
" shall be declared void " if judgment is rendered for the 
defendant, and by providing that " w^hen the defendant relies 
12 



134 LAW OF PATENTS. 

in his defence on the fact of a previous invention, knowledge, 
or use of the thing patented, he shall state in his notice of 
special matter the names and places of residence of those 
whom he intends to prove to have possessed a prior knowl- 
edge of the thing, and where the same thing had been used." 
This provision was added in consequence of the construction 
given to the former act, to the effect that notice of the places 
was not necessary to be given. In other respects, the construc- 
tion given to the Act of 1793, § 6, is applicable to the present 
law. The defendant is at liberty to plead specially, in which 
form of pleading he need give no other notice of his defence 
than the plea itself gives, or he may plead the general issue, 
and give notice of the special matter on which he relies. 
The statute does not undertake to enumerate all the defences 
which may be made to an action on a patent. It provides 
that when certain facts, which it enumerates, are to be relied 
on, and the general issue is pleaded, the defendant shall 
give notice of the facts which he means to put in evidence. 
The notice must be strictly construed ; if the defendant gives 
notice that he will prove the prior use of the inventioa in 
the United States, he cannot be allowed to offer evidence of 
its prior use in England, 

^ 260. But it will be useful to make a particular enumera- 
tion of the defences that may be made under the general 
issue, without notice, before we turn our attention to those 
mentioned ia the statute, of which notice must be given, 
when the general issue is pleaded. 

^ 261. The defendant may show, under the general issue, 
without notice, that he never did the act complained of, 
that is, that he has not infringed the patent, or that he was 
acting under a license or purchase from the plaintiff. He 
may show that the plaintiff is an alien, not entitled to a 
patent ; or that the plaintiff has not a good title as assignee ; 



i 



REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 135 

or that his patent was not duly issued according to law, in 
respect of the signatures of the public officers, or of the public 
seal, &;c, 

^ 262. He may also show that the invention is not a 
patentable subject; that is to say, admitting its novelty, he 
may show that it is not an " art, machine, manufacture, or 
composition of matter," in the sense of the statute. But the 
defence that the subject is not patentable on the ground of 
want of novelty, falls under the statute, and must be specified. 

^ 263. In like manner, the defendant may show, under 
the general issue, without notice, that the invention, though 
new, fails in point of utility, and is worthless and frivolous. 

§ 284. So, too, he may show that there is no specification, 
or that the specification is so ambiguous and unintelligible 
that the court cannot determine from it what the invention 
is that is intended to be patented. This is a different issue 
from that pointed out in the statute. If the specification do 
not describe the invention in clear and exact terms, so as 
to distinguish it from other inventions, but is so ambiguous 
and obscure that it cannot be ascertained with reasonable 
certainty for what the patent is taken, or what it includes, 
the patent is void for ambiguity; and this is put in issue by 
the plea of not guilty, because a clear and distinct specifica- 
tion of the invention is essential to the validity of the patent. 
But if the invention is definitely described in the patent and 
specification, so as to distinguish it from other inventions 
before known, there may still exist the defect described in 
the fifteenth section of the statute, of some concealment or 
addition made for the purpose of deceiving the public ; and 
when it is intended to show this, under the general issue, 
notice must be given. 

^ 265. We now come to the special defences enumerated 



136 LAW OF PATENTS. 

in the fifteenth section of the statute. The statute provides 
that the defendant may, under the general issue, give the 
statute itself in evidence, and certain special matters, of 
which he shall have given notice in writing to the plaintiff 
or his attorney thirty days before trial. 

^ 266. The first of these special defences is, " that the 
description and specification filed by the plaintiflT does not 
contain the whole truth relative to his invention or discovery, 
or that it contains more than is necessary to produce the 
described eflfect; which concealment or addition shall fully 
appear to have been made for the purpose of deceiving the 
public." We have already seen what was the general pur- 
pose of Congress in providing that notice should be given, 
when certain facts were to be offered in evidence ; but it is 
not very easy to define the scope of the issue intended by 
the above provision, or to distinguish the exact meaning of 
the statute in this particular. It is clear, however, that this 
issue, as we have already suggested, is distinguishable from 
the issue which presents the naked question whether there 
is an intelligible description of the invention, which will 
enable the public to know what it is. It may help us to 
understand the present provision, if we review the corre- 
sponding provision in the former Act, and the decisions made 
upon it. 

§ 267. The corresponding provision in the Act of 1793, 
§ 6, was in the same terms, but that act also provided that 
when judgment on this issue had been rendered for the 
defendant, "the patent shall be declared void;" which is 
omitted in the Act of 1836, ^ 15. In one of the earliest 
reported cases in which this clause of the statute of 1793 
came under consideration, it was held that if the invention 
is definitely described, in the patent and specification, so as 
to distinguish it from other inventions before known, the 
patent is good, although it does not describe the invention 



EEMEDY FOR INFRINGEMENT BY ACTION AT LAW. 137 

in such full, clear, and exact terms, that a person skilled in 
the art or science of which it is a branch would construct 
or make the thing, unless such defective description or cori' 
cecdment ■noas with intent to deceive the 'public. The reason- 
ing of the court, in this case, tends to show that they con- 
sidered the defect or concealment, with intent to deceive 
the public, to refer to the practicability of practising the 
invention from the specification ; and in a subsequent case 
they seem to consider that the statute intended to alter the 
common law, and to declare the patent void, only when the 
concealment or defect was with such an intent. But it is 
not quite clear, whether they considered that the issue raised 
by an allegation that the specification would not enable a 
workman to make the thing described, is, as a defence to 
the action, not one of the special defences of the statute, 
and consequently that it is raised by the plea of not guilty, 
without notice. 

k 26S. In a subsequent case, the Supreme Court of the 
United States decided that in order to justify a judgment 
declaring a patent void, the defect or concealment must ap- 
pear to have been made for the purpose of deceiving the 
public ; but if the defendant merely seeks to defend himself, 
he may do so by showing that the patentee has failed in 
any of the pre-requisites on which the authority to issue a 
patent depends. This decision made the evidence of fraudu- 
lent intent requisite only in the particular case and for the 
particular purpose of having the patent declared void. 

^ 269. Now, the statute of 1836 omits the provision that 
the patent shall be declared void, when judgment is rendered 
for the defendant, and it leaves the ground of a concealment 
or addition in the specification, wilh intent to deceive the 
public, simply a defence to the action, of a special nature. 
There can be no doubt, therefore, that when the defendant 
proposes to show that the specification contains more or less 
12* 



138 LAW OF PATENTS. 

than a true description of the invention, and that the con- 
cealment or addition was made for the purpose of deceiving 
the public, his plea must either be special, setting forth the 
defects and charging the intent, or it must be the general 
issue, accompanied by notice of the defects in the specifica- 
tion intended to be relied on. But I do not conceive that 
the statute means to say that no concealment or defect in a 
specification shall be available as a defence to the action, 
under the general issue, unless it was made with intent to 
deceive the public. The statute may be construed as if it 
read thus : " Whenever the defendant seeks to show that 
the specification does not contain the whole truth relative to 
the invention or discovery, or that it contains more than is 
necessary to produce the described effect, and that such con- 
cealment or addition was made for the purpose of deceiving 
the public, he may plead the general issue, and give such 
special matter in evidence, provided he shall have given 
notice," &c. On the other hand, if the defendant relies on 
a failure in the specification in respect of any of the pre- 
requisites for issuing a patent, he may show such failure, 
under a plea of the general issue, without any notice. 

§ ^70. The next special defence mentioned in the statute 
is, in substance, that the subject-matter is not new ; that is, 
" that the patentee was not the original and first inventor or 
discoverer of the thing patented, or of a substantial and 
material part thereof, claimed as new ; or that it had been 
described in some public work, anterior to the supposed dis- 
covery thereof by the patentee." 

§ 271. We have seen, in a former chapter of this work, 
when a party is or is not the original and first inventor of a 
patented subject; and also that a failure, in point of novelty, 
of any substantial and material part of the alleged invention, 
renders the patent void pro tanto. In order to ensure the 
plaintiff against surprise, whenever this defence is to be 



BEMEDY FOR INFRINGEMENT BY ACTION AT LAW. 189 

resorted to, the same section of the statute requires that the 
defendant " shall state, in his notice of special matter, the 
names and places of residence of those whom he intends to 
prove to have possessed a prior knowledge of the thing, and 
where the same had been used." This provision must be 
strictly complied with. 

§ 272. It is also fairly to be inferred, from the requisition, 
that notice shall be given of " any special matter " intended 
to be offered in evidence " tendhig to prove " the particular 
defence relied upon, that the notice must describe whether 
the whole, or a part, and what part, of the invention is to be 
charged with want of novelty, and in what public work, or 
works, the whole, or a part, or what part, had been described 
before the supposed discovery by the patentee. There is no 
limitation of time within which this defence must be set up. 

§ 273. The stringent effect of this defence has been mate- 
rially modified, however, by two other provisions. The first 
is contained in the two provisions which are found at the 
end of the same fifteenth section of the Act of 1836 ; " pro- 
vided that whenever it shall satisfactorily appear that the 
patentee, at the time of making his application for the patent, 
believed himself to be the first inventor or discoverer of the 
thing patented, the same shall not be held to be void, on 
account of the invention or discovery, or any part thereof, 
having been before known or used in any foreign country, it 
not appearing that the same, or any substantial part thereof, 
had before been patented or described in any printed publi- 
cation ; and, provided also, that whenever the plaintiff shall 
fail to sustain his action, on the ground that in his specifica- 
tion of claim is embraced more than that of which he was 
the first inventor, if it shall appear that the defendant had 
used or violated any part of the invention justly and truly 
specified, and claimed as new, it shall be in the power of the 
court to adjudge and award, as to costs, as may appear to be 
just and equitable." 



140 LAW OF PATENTS. 

§ 274. The other provision is contained in the Act of 
March 3, 1S37, ^ 7, 9, in relation to a disclaimer. The 
seventh section enacts as follows : " That, whenever any 
patentee shall have, through inadvertence, accident, or mis- 
take, made his specification of claim too broad, claiming 
more than that of which he was the original or first inventor, 
some material and substantial part of the thing patented, 
being truly and justly his own, any such patentee, his 
administrators, executors, and assigns, whether of the whole 
or of a sectional interest therein, may make disclaimer of 
such parts of the thing patented as the disclaimant shall not 
claim to hold by virtue of the patent or assignment, stating 
therein the extent of his interest in such patent; vi^hich dis- 
claimer shall be in writing, attested by one or more wit- 
nesses, and recorded in the Patent Office, on payment by the 
person disclaiming, in manner as other patent duties are 
required by law to be paid, of the sum of ten dollars. And 
such disclaimer shall thereafter be taken and considered as 
part of the original specification, to the extent of the interest 
which shall be possessed in the patent or right secured 
thereby, by the disclaimant, and by those claiming by or 
under him subsequent to the record thereof. But no such 
disclaimer shall affect any action pending at the time of its 
being filed, except so far as may relate to the question of 
unreasonable neglect or delay in filing the same." 

^ 275. The ninth section is as follows : " Be it further 
enacted, anything in the fifteenth section of the act to which 
this is additional to the contrary, notwithstanding, that, 
whenever by mistake, accident, or inadvertence, and without 
any wilful default, or intent to defraud or mislead the public, 
any patentee shall have in his specification claimed to be the 
original and first inventor or discoverer of any material or 
substantial part of the thing patented, of which he was not 
the first and original inventor, and shall have no legal or just 
right to claim the same, in every such case the patent shall 



REMEDY FOE INFRINGEMENT BY ACTION AT LAW. 141 

be deemed good and valid for so much of the invention or 
discovery as shall be truly and honttfide his own : Promded, 
it shall be a material and substantial part of the thing 
patented, and be definitely distinguishable from the other 
parts so claimed without right as aforesaid. And every 
such patentee, his executors, administrators, and assigns, 
whether of the whole or a sectional interest therein, shall be 
entitled to maintain a suit at law or in equity, on such patent 
for any infringement of such part of the invention or dis- 
covery as shall be bona fide his own as aforesaid, notwith- 
standing the specification may embrace more than he shall 
have any legal right to claim. But, in every such case in 
■which a judgment or verdict shall be rendered for the plain- 
tiff, he shall not be entitled to recover costs against the 
defendant, unless he shall have entered at the Patent Office, 
prior to the commencement of the suit, a disclaimer of all 
that part of the thing patented which was so claimed with- 
out right; Provided, however, that no person bringing any 
such suit shall be entitled to the benefit of the provisions 
contained in this section, who shall have unreasonably 
neglected or delayed to enter at the Patent Office a dis- 
claimer, as aforesaid." 

§ 276. The result of these various enactments is, that for 
so much of the invention as has been described in some 
public work anterior to the supposed discovery by the 
patentee, whether the description was known to him in point 
of fact, or not, — if it be a substantial and material part of 
the thing invented, and be claimed as new, — and for so 
much as had been previously patented, the patent is inop- 
erative. But the mere previous knowledge or use of the 
thing in a foreign country will not defeat a patent here, 
issued to an original inventor, provided it had not been pre- 
viously patented or described in a printed publication. 

§ 277. It will be observed, that the same statute uses 



14a LAW OF PATENTS. 

different phraseology in describing the kind of publication 
which is to have this effect. In the body of the 15th sec- 
tion of the Act of 1836, it is declared to be a description in 
"some public work;" and in the proviso of the same section 
it is declared to be " any printed publication." This renders 
it somewhat doubtful, as to what kind of publication is 
intended. The phrase " some public work " would seem to 
point to a class of regular established publications, or to 
some book publicly printed and circulated, so as to be open 
to the public ; while the phrase " any printed publication " 
is broad enough to include any description printed in any 
form, and published or circulated to any extent, and in any 
manner. Taking the whole section together, however, and 
looking to the apparent policy of the statute, it is probable 
that the intention of Congress was, to make it a conclusive 
presumption that the patentee had seen any printed descrip- 
tion of the thing, which had been so printed and published 
as to be accessible to the public ; but not to adopt that pre- 
sumption in cases of printed descriptions published and cir- 
culated in such a manner as not to be accessible either to the 
public or to him. If the presumption were adopted in cases 
of the latter class of publications, an original and meritorious 
inventor might be defeated of his 'patent, by showing that 
the thing had, in a foreign country, been privately described 
in a printed paper published to a single individual; which 
certainly would not be a description in a "public work," 
although it would be a description in a "printed publica- 
tion." When it is considered that the statute excepts cases 
even where the thing had been known or used abroad, pro- 
vided it had not been patented, or described in any printed 
publication, it seems reasonable to suppose that the publica- 
tion intended is one to which the public could have access ; 
and this construction is fortified by the consideration that 
the defence enacted in this section, to which the proviso 
establishes the exception, is, that the thing had been described 
in " some public work." 



REMEDY FOB. INFRINGEMENT BY ACTION AT LAW. 143 

§ 278. If this be so, it would seem to be a question for 
the jury, under all the circumstances under which the pub- 
lication has taken place, to determine whether the descrip- 
tion was so printed and published as to be accessible to the 
public, where the publication took place. If it was so 
accessible, the presumption is against the patentee, and his 
patent will be defeated, notwithstanding he may not have 
seen it; because the description was already in the pos- 
session of the public. 

§ 279. What, then, constitutes a " description ? " No 
judicial construction has yet been given to this term. It 
can scarcely be supposed, however, that a mere suggestion 
of the possibility of constructing the machine, or other thing, 
which may have been subsequently patented, is what the 
statute intends. The reason why the statute adopts the 
presumption of knowledge, on the part of the subsequent 
patentee, is, that a knowledge of the thing was already in 
the possession of the public. It makes knowledge and the 
means of knowledge, on the part of the public»the same 
thing; and, acting upon this principle, it holds that the 
public have acquired nothing from the specification of the 
patentee which they did not possess before, and that the 
patentee has invented nothing which he, as one of the pub- 
lic, could not have derived from the means of knowledge 
which the public before possessed. Hence it is, that the 
production of a prior description, which was in the posses- 
sion of the public, negatives the title of the patentee as the 
first inventor. But it follows necessarily, from this view of 
the principle on which the law proceeds, that the descrip- 
tion must be such as to give the public the means of 
knowledge, or, in other words, must of itself enable the 
public to practise the invention. It is not necessary that the 
invention should have been reduced to practice ; but unless 
the description would enable the public, without further 
invention, to put the thing in practice, it cannot be said that 



144^ LAW OP PAT-ENTS. 

a knowledge of that thing is in the possession of the public. 
Accordingly, it has been laid down by two eminent writers 
on the patent law, that the description which is to have the 
effect of defeating a subsequent patent ought to approach 
the character, and in some degree to answer the purposes, 
of a specification, by serving as a direction for making, 
doing, or practising the thing which is the subject of the 
patent. But mere speculations or suggestions of an experi- 
mental kind, not stated in such a way as to serve for a 
practical direction, are entirely analogous in their character 
to abortive and unsuccessful experiments in practice. The 
Marquis of Worcester's Century of Inventions contained 
many hints and speculations, on which subsequent inventors 
have acted ; but as they were the mere speculations of an 
ingenious man, not reduced by him to practice, and not so 
stated that the statement would answer for a rule of work- 
ing, without the exercise of invention on the part of the 
public, they have not been held to have defeated the patents 
to which they gave rise. 

^ 280. The defendant, therefore, — to return to the consid- 
eration of this defence, — who gives notice of the statute 
defence of want of novelty, will not be defeated in it, if he 
proves a material part of the invention to have been known 
or used before the discovery by the patentee, provided he 
shows that the specification was made broader than the real 
discovery of the plaintiff, with " wilful default or intent to 
defraud or mislead the public." But if it was made broader 
than the real discovery through accident or inadvertence, 
the patent will still be good, and an action may be main- 
tained for so much of the invention or discovery as is bona 
fide the invention or discovery of the patentee, provided it is 
a material and substantial part of the thing patented, and is 
definitely distinguishable from the other part which the paten- 
tee had no right to claim ; unless there has been an un- 
reasonable neglect or delay to file the disclaimer. No costs, 



REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 145 

however, can be recovered in such an action, unless the 
plaintiff, before bringing his action, has filed in the Patent 
Office a disclaimer of all that part of the thing patented 
which his original specification should not have claimed. 
If the disclaimer is filed before the action is brought, but the 
entry of it at the Patent Office has been unreasonably- 
neglected or delayed, the defence of a want of novelty in 
any material respect, from whatever cause the defect in the 
original specification arose, will be admitted as a bar to the 
action ; and the question of unreasonable neglect or delay 
will be a question of law for the court. 

§ 281, Of course, a defence which goes to the originality 
of a material and substantial part of the thing patented, the 
essence of the plaintiff's invention, as is most frequently the 
case, will not be affected by these provisions. 

§ 282. Care is to be taken, therefore, in framing this 
defence, to ascertain, in the first place, whether the whole 
or only a part of the substance of the thing patented is open 
to the objection of prior use or knowledge ; and, in the 
second place, whether a disclaimer has been filed. If a 
disclaimer has been filed in reasonable time, the defence of 
a want of novelty that goes only to a part of the thing 
patented, and still leaves a material and substantial part 
unaffected by the objection, will not be an answer to the 
action, bat will simply prevent the recovery of costs. But 
a defence which goes to the originality of the whole patent, 
and leaves nothing new that is material and substantial, and 
capable of distinction as the subject-matter of the plaintiff's 
invention, will be an answer to the action, notwithstanding 
any disclaimer. It is obviously necessary, therefore, to 
specify in the notice of defence the particular parts of the 
thing patented which it is intended to attack. 

§ 283. Another of the statute defences is that the paten- 
13 



146 LAW OF PATENTS. 

tee had allowed his invention to become public, before his 
application for a patent^ or, as it is expressed in the statute, 
that it " had been in public use, or on sale, with the consent 
or allowance of the patentee, before his application for a 
patent." This provision is intended to embody the defence 
of an abandonment or dedication to the public of his inven- 
tion by the patentee, prior to his application for a patent. 
The question whether a patentee, by any and what degree 
of use of his invention before his application for a patent, 
could lose his inchoate right in the thing invented, and not 
be able afterwards to resume it at his pleasure, arose before 
the statute of 1836 was passed, and the Supreme Court of 
the United States declared that an inventor might undoubt- 
edly abandon his ini-ention, and surrender or dedicate it to 
the public ; and that the question which generally arises is, 
whether the acts or acquiescence of the party furnish, in 
the given case, satisfactory proof of such an abandonment or 
dedication to the public. The court held that the true con- 
struction of the then existing law was, that the first inven- 
tor cannot acquire a good title to a patent, if he suffers the 
thing invented to go into public use, or to be publicly sold 
for use, before he makes application for a patent ; that such 
a voluntary act, or acquiescence in the public sale or use, is 
an abandonment of his right ; or lather creates a disability 
to comply with the terms and conditions of the law, on 
which alone the public officer is authorized to grant a 
patent. In a more recent case, the same court reaffirmed 
this construction of the patent laws, and held that the right 
of an alien patentee was vacated in the same manner by a 
foreign use or knowledge of his invention, under the then 
existing statutes. 

§ 284. It was the object of the clause now under consid- 
eration to make this defence of a prior abandonment or dedi- 
cation to the public available under the general issue, upon 
notice of the facts intended to be proved. By " public use " 



EEMEDY FOE INFRINGEMENT BY ACTION AT LAW. 147 

is meant use in public ; that is to say, if the inventor him- 
self makes and sells the thing to be used by others, or it is 
made by one other person only, with his knowledge and 
without objection, before his application for a patent, a 
fortiori, if he suflfers it to get into general use, it will have 
been in " public use." But where the patentee alone makes 
the thing for the purposes of experiment and completion, 
without selling it to be used by others, the term " public 
use " is not applicable. 

§ 285. An important question next arises, as to what will 
constitute proof of the " consent and allowance " of the 
patentee to the " public use or sale " of his invention before 
his application. In the first place, a knowledge of such 
public use or sale by others, without objection on his part, 
will go far towards raising the presumption of an acquies- 
cence, and in some cases will be a sufficient proof of it. 
The question in such cases is as to his consent ; and if 
knowledge of the use of his invention by others is brought 
home to him, and no exclusive right has been asserted by 
him against that use, his silence will furnish very strong 
evidence that he has waived his right. If the evidence 
shows a long acquiescence, or a very general use, it will be 
conclusive. 

§ 286. In the second place, although acquiescence cannot 
be presumed without knowledge, such knowledge may be 
presumed from circumstances, and is not always required to 
be proved by direct evidence. 

§ 287. In the third place, no particular lapse of time is 
necessary to be shown, after knowledge and acquiescence 
are estabhshed, in order to prove an abandonment or dedica- 
tion to the public. In one of the cases the invention was 
made in the year 1804, and suffered to go into general use 
without any claim of an exclusive right, or any objection, 



148 LAW OF PATENTS. 

and without receiving any compensation, until the year 
1822. In another case the invention was completed in 
1811, and the letters-patent were obtained in 1818; in the 
interval, a single individual had made and publicly sold 
large quantities of the thing patented under an agreement 
with the inventor as to price. In a third case, the inven- 
tor, who was a foreigner, came to this country in 1817, and 
might lawfully have applied for a patent in 1819, but did 
not do so until three years afterwards. It appeared that he 
invented the instrument in 1813 or 1814, and made it 
known to certain persons in England, by or through whom, 
contrary to his intention, it was publicly used and sold there. 
In a fourth case, in England, the patentee had sold the arti- 
cle in the public market four months before the date of the 
patent. In all these cases the patentee was held to have 
abandoned or dedicated to the public his right in the inven- 
tion. 

§ 288. But on the other hand, it is a still further question, 
what constitues a public use, with the consent or allowance 
of the patentee ? What acts, in other terms, within a 
longer or shorter period of time, or what permission to use, 
granted or allowed to several persons, or restricted to a 
single instance, or what use by the patentee himself, will 
amount to an abandonment or dedication to the public ? Is 
the intention with which the acts are done, or the use per- 
mitted, an element in the question, or is the intention wholly 
immaterial, provided certain acts are done, or a certain use 
is permitted? In determining these questions, it is neces- 
sary to discriminate between the cases of a use permitted to 
others, or of a knowledge imparted to others, and the exer- 
cise or practice of the invention by the patentee himself. 

^ 289. The Supreme Court of the United States have 
said that the intention of the inventor is not the true ground 
in these cases ; that " whatever may be his intention, if he 



KEMEBY FOR INFEINGEMENT BY ACTION AT LAW. 149 

suffers the invention to get into public use, through any 
means whatsoever, without an immediate assertion of his 
right, he is not entitled to a patent ; nor will a patent 
obtained under such circumstances, protect his right." The 
meaning of this obviously is, that no matter what the 
intention of the patentee was, in imparting to another a 
knowledge of his invention, if the person or persons to 
whom he had so imparted it, afterwards, though fraudulent- 
l}'-, use the invention in public, and the patentee looks on 
without objection or assertion of his right, the public will 
have become possessed of the invention, and the patentee 
cannot resume his right in it by obtaining a patent. This 
meaning is apparent from other parts of the opinion in the 
same case ; for the court say, that if the invention has 
become known to the public through fraudulent means, the 
patentee should assert his right immediately, and take the 
necessary steps to legalize it. So, too, it is apparent from 
the opinion of the same court, in another case, that it is the 
voluntary acquiescence of the inventor in the public use, and 
not his voluntarily imparting the knowledge to the person 
who fraudulently or otherwise uses it in public, that fastens 
upon him the presumption of a dedication. It is also clear, 
that when the act or acts of user were by way of experiment, 
in order to perfect the invention, the inventor does not lose 
his right. 

§ 290. Hence it appears, that the intention with which 
the inventor did the acts which are relied on as proof of 
" public use " is material, unless the evidence goes to the 
extent of showing, that the invention had got beyond the 
control of the inventor, and he had not taken any steps to 
prevent its being thus situated. In other words, it may be 
a material element, in determining whether the presumption 
of acquiescence in public use arises, to ascertain whether 
the inventor used the invention himself, or imparted a 
knowledge of it to others, with or without an intention to 
13* 



150 LAW OF PATENTS. 

limit such use or knowledge, in respect to time, extent, or 
object. 

^291. Where a party practises his invention himself, for 
the purposes of experiment or completion before he takes out 
a patent, the inference that he intends to surrender his 
invention to the public does not arise; and consequently a 
dedication cannot be proved by evidence that shows only 
experimental practice by the inventor, whether in public or 
in private. Indeed, it may be stated, as a general test, in 
cases of a supposed dedication through the using, exercising, 
or practising the invention by the patentee himself, previous 
to his application for a patent, that whenever the evidence 
stops short of proving such a use, exercise, or practice for the 
purpose of gain, a " public use " will not be proved. 

§ 292. It has been held in England, where the " public 
use " must be a public use in England, that the making in 
England of a single pair of wheels, the subject of the patent, 
under the direction of the patentee, but under an injunction 
of secrecy, to be sent abroad for a person who intended to 
take a share in the patent, was not a public use within the 
realm. But as our law stood before the year 1839, if the 
inventor sold to any one who might choose to buy, although 
it was only a single specimen of his invention, and sold for 
profit on it as an invention, such a sale would be a " public 
use," and the unlimited nature of the object with which a 
knowledge of the invention was imparted, would prevent 
him from resuming his exclusive right by a subsequent 
patent. It will presently be stated, how far the law has been 
modified in this respect. 

^ 293. Another limitation to the doctrine of presumptive 
dedication, or public use, with the consent, &c., is found in 
the case of a piratical user of the invention, by a party to 
whom the inventor has imparted a knowledge of it in confi-. 



EEMEDY FOR INFRINGEMENT BY ACTION AT LAW. 151 

dence, before he has applied for a patent. Many inventions 
can be perfected and carried into practice only through the aid 
of workmen, servants, and other employees. We have seen 
that an inventor may entrust another person, confidentially, 
with a knowledge of his invention, for certain limited pur- 
poses ; and if such a person afterwards fraudulently makes 
public the knowledge so acquired, the authorities seem to be 
agreed, that the inventor may, if he takes immediate steps 
to give notice of his exclusive right, obtain a valid patent. 
The words of the statute, describing the defence now under 
consideration, make it clear, that, if the invention has come 
into public use through a breach of confidence, it cannot be 
said to be in public use "with the consent or allowance" of 
the patentee ; it is only when he has been silent after it has 
so become public, that the presumption of consent and allow- 
ance arises. The Act of 1839, as will appear hereafter, has 
made this point still more clear. Another instance of a use, 
which will not expose the patentee to the consequences of 
this defence, is where the use has been permitted to others, 
for other limited purposes than those of experiment or com- 
pletion, as from motives of neighborly kindness and the like. 
The test applicable here is that the evidence excludes the 
supposition that the patentee has put the thing into public 
use, for the purpose of profit on it, as ar> invention. If a 
patentee could show clearly that he had allowed to others a 
limited use of his invention, not for his own profit, but for 
their accommodation, in a manner consistent with a clear 
intention to hold the exclusive privilege, and the invention 
had not got beyond his control, with his apparent acquies- 
cence, he would not be within the mischief of this part of 
the statute. Of course, mere delay to take out a patent, 
unaccompanied by public use or sale of the thing, with the 
consent or allowance of the patentee, before his application, 
however long may be the interval between the completion 
of the thing and the application, will have no effect upon the 
patent. Mere delay has no other importance than as it 



162 LAW OF PATENTS. 

tends to show acquiescence in such public use as may have 
occurred, in the mean time; or to show that the acts of the 
inventors went beyond a use or permission to use, for the 
purpose of experiment, or other limited object. 

§ 294. It now remains to be stated, how far this defence 
of a " prior public use or sale with the consent or allow- 
ance" of the patentee has been restricted or modified by 
subsequent legislation. Under this clause of the Act of 
1836, a use of the invention by a single person, or a sale of 
the thing invented to a single person, might, as we have 
seen, amount to a public use or sale, with the consent or 
allowance of the patentee. To remedy the inconvenience 
arising from this operation of the law, the Act of 1839, ^ 7, 
provided " that every person or corporation, who has or shall 
have purchased or constructed any newly-invented machine, 
manufacture, or composition of matter, prior to the applica- 
tion, by the inventor or discoverer, for a patent, shall be 
held to possess the right to use, and vend to others to be 
used, the specific machine, manufacture, or composition of 
matter, so made or purchased, without liability therefor to 
the inventor, or any other person interested in such inven- 
tion ; and no patent shall be held to be invalid, by reason of 
such purchase, sale, or use, prior to the application for a 
patent as aforesaid, except on proof of abandonment of such 
invention to the public ; or that such purchase, sale, or prior 
use, has been for more than two years prior to such applica- 
tion for a patent." 

§ 295. This enactment enables a patentee to permit the 
use of his invention, by individuals, before his application, 
with more safety than he formerly could. Such use is not 
to invalidate the patent, except on proof of abandonment of 
the invention to the public, or that it had been continued for 
more than two years prior to the application for a patent. 
The question arises upon this provision, then, whether the 



REMEDY FOR INFRINGEMENT BY ACTION AT LAW. 153 

particular purchase, sale, or prior use, may of itself, under 
some circumstances, furnish proof of abandonment to the 
public, or whether such an abandonment must be proved by 
other cases, and by other evidence dehors the particular 
purchase, sale, or prior use, that happens to be in question. 
The obvious construction of the act is, that a purchase, sale, 
or prior use, before the application for a patent, shall not 
invalidate it, unless it amounts to an abandonment to the 
public ; a purchase, sale, or prior use, shall not have this 
effect, per se, but if connected with facts which show an 
abandonment to the public, or if it has been for more than 
two years prior to the application, it will have this effect. 
Thus, where the defendants used an invention for four 
months before the application of the inventor for a patent, 
such use being in public, with the consent and allowance of 
the patentee, he being in their employ, and making a part 
of the apparatus, by which the invention was to be applied, 
but receiving no compensation for the use of his invention, 
and not giving any notice to the defendants not to use his 
invention, until, on a misunderstanding upon another sub- 
ject, he left their employment; the Supreme Court of the 
United States said that it would be no strained construc- 
tion, under such circumstances, to hold that the patent, sub- 
sequently obtained, was void; although the decision merely 
went to the point that the acts of the patentee justified the 
presumption of a license to the defendants. 

§ 296. The words of the statute which thus authorizes a 
public use or sale by or to individuals, prior to the applica- 
tion for a patent, make the subject of such use or sale, " any 
newly invented machine, manufacture, or composition of 
matter;" and the purchaser is authorized to use, and vend 
to others to be used, " the specific machine, manufacture or 
composition of matter," without liability to the inventor, &c. ; 
and then the statute declares, that the patent shall still be 
valid, notwithstanding such prior use or sale, except on 



154 LAW OF PATENTS. ' 

proof of the abandonment of " such invention " to the public, 
&c. It might admit of some doubt, upon this language, 
whether the invention of a method of manufacture, a process, 
or an art, or anything but a machine, a manufacture, or a 
composition of matter, is within the scope of the provision, 
and whether the purchaser could do anything more than use 
or vend to others to be used the specific thing which he had 
purchased. But the Supreme Court of the United States 
have construed tlie terms "newly invented machine, manu- 
facture, or composition of matter," to mean "the invention 
patented," whatever it may be ; and the words " the specific 
machine," to refer to the thing as originally invented, of 
which the right is afterwards secured by a patent; so that 
according to the precedent afforded by the case in which 
this construction was adopted, this statute embraces what- 
ever may be the subject-matter of a valid patent, although it 
may be a process, or method of manufacture, and not a 
machine, &c. 

^ 297. The result, therefore, of the difTerent statute pro- 
visions and the authorities, is, that this defence of a prior 
public use or sale, with the consent or allowance of the 
patentee, can now be made good so as to invalidate a patent, 
only by showing an abandonment to the public, or that the 
use or sale dates from a period more than two years before 
the application for a patent ; that such an abandonment 
will not be proved by the particular act of use or sale alone, 
but that the act of use or sale may be attended with such 
circumstances as to amount to an abandonment; and that 
the abandonment may also be proved by other acts or omis- 
sions disconnected with the particular use or sale which the 
patentee may have allowed to individuals, and which he can 
show did not alone amount to an abandonment. 

§ 29S. The next special defence stated in the Act of 1836 
is, " that the patentee had surreptitiously or unjustly ob- 



KEMEDY FOR INFRINGEMENT BY ACTION AT LAW. 155 

tained the patent for that which was in fact invented or 
discovered by another, who was using reasonable diligence 
in adapting and perfecting the same." This provision was 
intended to embrace the case of a patent being obtained 
fraudulently, when the party obtaining it was not the 
inventor, and also the case of two independent inventors, 
where the one makes his application before the other, who 
was the first inventor, and so obtains a patent for that which 
was previously invented by another. 

§ 299. With regard to the first case, of a patent obtained 
by a person not the inventor, by a fraud on the rights of the 
real inventor, it is sufficient to observe that such a defence, 
if made out, would be a complete bar to the action, upon 
general principles, as well as upon other provisions of the 
statute. One of the modes in which a patent may be thus 
surreptitiously obtained is by obtaining a knowledge of the 
invention from the public records, where the inventor has 
deposited a description of it. When the real inventor has 
filed such a description at the Patent Office, or has obtained 
a patent, he has given notice to every subsequent applicant 
for a patent for the same thing of the fact that he invented 
it ; and although others may not afterwards be able to offer 
direct evidence that a subsequent patentee had seen and 
pirated the machine or other thing invented by the former 
applicant or patentee, yet the jury may infer a piracy from 
the existence of the former record, of which every subsequent 
patentee is presumed to have knowledge. As to the case 
of two independent inventors, one of whom makes an earlier 
application than another for a patent, and succeeds in obtain- 
ing it,- it will be a good defence to an action upon such a 
patent, if it can be shown that the same thing was first 
invented by another, although not actually perfected, pro- 
vided the first inventor was at the time using reasonable 
diligence in adapting and perfecting the thing invented. 



156 LAW OF PATENTS, 

§ 300. The last defence mentioned in the statute is, that 
the patentee, being an alien at the time the patent was 
granted, " had failed and neglected, for the space of eighteen 
months from the date of the patent, to put and continue on 
sale to the public, on reasonable terms, the invention or 
discovery for which the patent issued." The object of this 
provision was, to prevent foreign inventors from obtaining 
patents in this country, and afterwards withholding the use 
of their inventions from the public for an unreasonable 
length of time. 



CHAPTER III. 

OF THE REMEDY IN EQITITY TO EESTRAIN INFRINGEMENTS. 

^ 301. We have seen that the common law and the 
statute both afford a remedy, by an action for damages, for 
the infringement of patent rights. But this remedy would 
be wholly inadequate to the protection of such rights, if it 
were not accompanied and fortified by another remedy, 
which flows from that great principle of equity jurispru- 
dence, that where there is a legal right, and the nature of 
the injury to which it is exposed is such that a preventive 
remedy is indispensable, equity will afford that remedy, by an 
injunction. The grounds of the equity jurisdiction in cases 
of patents are, the prevention of irreparable mischiefs, the 
suppression of a multiplicity of suits and vexatious litigation, 
and the more complete discovery, from the party guilty of 
infringement, of the extent of the injury done to the paten- 
tee, than can be obtained in an action at law. It does not 
belong to the purposes of this work to trace the origin of 
this branch of equity jurisdiction, nor is it necessary to do 
so, since the patent laws have expressly adopted, in the 
broadest terms, the remedy which it affords, for the protec- 
tion of patent rights, and have directed the proper courts 
" to grant injunctions according to the course and principles 
of courts of equity, to prevent the violation of the rights of 
any inventor as secured to him by any law of the United 
States, on such terms and conditions as the said courts may 
deem reasonable." All that is requisite, therefore, in the 
present work, is to develop the application of the doctrines 
and practice of courts of equity to the rights of inventors, in 
the remedy by injunction. 
14 



158 LAW OF PATENTS. 

§ 302. As a preliminary reroark, however, we may notice, 
that the discretion vested in the court by the terms of the 
statute above cited, to grant injunctions on such terms and 
conditions as the court may deem reasonable, is in perfect 
accordance with the principles of equity. This discretion is 
not a wholly unregulated discretion, but the clause in which 
it is expressed is to be considered as affected by the previous 
direction that the injunction is to be granted according to 
the course and principles of courts of equity, which are 
guided by certain well-settled rules ; so that the terms and 
conditions to be imposed in each case will be ascertained by 
applying to the circumstances of the case those principles 
and that course of practice which have been usually fol- 
lowed, and which will admit of a "reasonable" application 
to the particular facts of the case. 

§ 303. I. The Parties. The parties entitled to relief in 
equity against the infringement of a patent are, first, the 
party or parties interested in the patent. As the remedy in 
equity is given in order to protect a legal right, and as the 
statute gives a right of action to the person or persons inter- 
ested, whether as patentee, assignees, or grantees of the 
exclusive right for a particular district, it follows that any 
person holding the legal title, or the right to bring an action, 
may bring a bill for an injunction. 

§ 304. We have seen when the assignee of a patent may 
sue at law in his own name, and when he should join his 
assignor. The same rules will govern in equity, in deter- 
mining who are necessary parties to the bill. If the assignee 
has the whole interest, he may sue alone ; but if he has less 
than the whole interest, he must join the patentee. If the 
assignment has not been recorded, the assignee is not sub- 
stituted to the right and responsibility of the patentee, so as 
to maintain any suit at law or in equity, founded upon the 
patent; and where there is a joint suit by the patentee and 



REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 159 

the assignee, and a disclaimer has been filed by the patentee, 
in which the assignee did not join, the disclaimer cannot 
operate in favor of the complainants in such a bill, or in an 
action at law. 

§ 305. There is, however, one distinction between an 
action at law and a suit in equity, in respect to the parties, 
and that is the case of an assignment of the exclusive right 
for a particular district. The grantee of such a right may 
bring an action at law, within his own district, for an infringe- 
ment, even against the patentee himself, and consequently 
he may bring such an action always in his own name. 

^ 306. But in equity the patentee may be joined with 
the assignee of such an exclusive right, if it be a right to 
use a limited number of the patented machines in a par- 
ticular district, because the interest of the patentee is not all 
vested in the grantee, who, although he may prevent the 
patentee from licensing other persons within the district, 
cannot obtain for himself the right to use more machines 
than the original grant authorized, without paying the 
patentee for such further license. This interest renders the 
patentee a proper party in such a bill. Different persons, 
who have infringed a patent independently of each other, 
cannot be made defendants in the same bill. 

§ 307. II. The Bill. A Bill for an injunction to restrain 
the infringement of a patent, after the address to the court 
and the statement of the parties, should recite the applica- 
tion for the letters-patent, by the inventor, and the compli- 
ance by him with all the pre-requisites for obtaining them, 
and the issue of the letters, giving the title as it is contained 
in them verbatim, their attestation by the proper officers, and 
their delivery to the patentee. Profert of the letters should 
be made, but it is not necessary to set forth the description 
of the invention given in the specification. It is necessary, 



160 LAW OF PATENTS. 

however, to state that the plaintiff, after the issuing of the 
patent, put his invention into use, and is, at the time of 
filing the bill, in the exclusive possession of it. If the bill 
is brought upon the title of an assignee, either of the whole 
or a part of the interest, or of an administrator, or if the 
patent has been renewed, or extended, or amended by a 
disclaimer, the facts should be properly set forth, to show 
the present state of the title and the right for which protec- 
tion is asked. The bill should further state the infringe- 
ment complained of, whether it has been actually committed 
or is threatened, and if the right has been previously estab- 
lished by an action at law, against the same or any other 
party, or an injunction has been previously obtained against 
the same or any other party,, the fact should be set forth. 
These averments are usually followed by a statement that 
the defendant has been requested to desist from the use of 
the invention, and to account for the damages which the 
plaintiff has sustained. Then follows the charge of actual 
combination by the defendant with others, if the facts 
require it, and of a conspiracy, if one is intended to be 
proved, to destroy the plaintiff's exclusive privilege. The 
prayer of the bill is for a discovery upon oath and particular 
answers to the interrogatories, which should be pointed at 
all the previous material averments in the bill, for a general 
answer to the bill, for a decree that the defendant account 
for and pay over the gains and profits which have accrued 
to him from using the invention, for an injunction to restrain 
the defendant from the further use of the invention, and to 
compel the delivery or destruction of the machines or other 
things which he has made, and for further relief. The 
prayer should close with asking for a writ of injunction, and 
a subpoena. The bill should be sworn to, by the usual 
affidavit. 

^ 308. It may often be a serious question, whether an orig- 
inal bill filed for an injunction and other relief is affected by 



KEBIEDY IN EQUITY TO EESTRAIN INFRINGEMENTS. 161 

a subsequent surrender and renewal of the patent, pending 
the proceedings. In a case where this had happened, and 
a temporary injunction had been granted on the original bill, 
in which the patentee and certain assignees were plaintiffs, 
and upon the new patent a supplemental bill was filed 
against the defendant for the continuance of the injunction 
and other relief, the injunction was ordered to stand con- 
tinued, as to the new patent, stated in the supplemental 
bill, until the hearing or further order. Hence it appears, 
that when- a patent is surrendered and renewed, pending a 
temporary injunction, a supplemental bill is necessary, in 
order to continue the injunction as to the new patent. 

^ 309. III. The Injimction. We have now to state, in 
the first place, the general principles on which courts of 
equity proceed in granting, continuing, or dissolving injunc- 
tions, in cases of patents. To obtain an injunction, the 
plaintiff must accompany his application with an affidavit 
that he then believes himself to be the original and first 
inventor of the thing patented; for, it is said, although when 
he obtained his patent he might have very honestly sworn 
as to his belief of such being the fact, yet circumstances 
may have subsequently intervened, or information may have 
been communicated, sufficient to convince him that it was 
not his own original invention, and that he was under a 
mistake when he applied for his patent. Such a special 
affidavit was reqtiired by Mr. Justice Washington to be 
subjoined to a bill. And it is the usual practice, on moving 
for an injunction before the answer has been filed, to read 
such an affidavit, as well as others to the same purport, 

§ 310. In the courts of the United States, notice that an 
injunction is to be applied for must be served on the de- 
fendant, as no injunction, whether temporary or final, can 
be granted without reasonable previous notice to the adverse 
party or his attorneys, of the time and place of moving for 
14* 



102 LAW OF PATENTS. 

the same. Injunctions, therefore, are not granted in our 
courts on ex parte applications, in cases of patents, although 
they may be granted on filing the bill and before answer, on 
notice to the party to be affected, as well as after answer 
and upon the hearing. 

§ 311. The bill and the application being, then, in proper 
form, the first thing to be considered is, whether the court 
will require the patentee to establish his legal right by an 
action at law, before it grants the injunction, or whether it 
will grant the injunction, in the first instance, upon the 
proof of a legal right, furnished by the bill itself, and the 
accompanying affidavits. Upon this point the rule is, that 
where a patent has been granted, and there has been an 
exclusive possession of some duration under it, the court will 
interpose its injunction, without putting the party previously 
to establish the validity of his patent by an action. But 
where the patent is but of yesterday, and, upon an application 
being made for an injunction, it is endeavored to be showai, 
in opposition to it, that there is no good specification, or 
otherwise that the patent ought not to have been granted, 
the court will not, from its own notions upon the matter in 
dispute, act upon the presumed validity or invalidity of the 
patent, without the right having been ascertained by a pre- 
vious trial, but will send the patentee to law, to establish 
the validity of his patent in a court of law, before it will 
grant him the benefit of an injunction. 

§ 312. The rule thus stated has been followed by our 
own courts, with further explanations, which extend its ap- 
plication to the particular facts of the cases that have arisen. 
The practice is, to grant an injunction upon the filing of the 
bill, and before a trial at law, if the bill state a clear right, 
and verify the same by affidavit. If the bill states an ex- 
clusive possession of the invention or discovery, an injunction 
is granted, although the court may feel doubts as to the 



REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 163 

validity of the patent. But if the defects in the patent or 
specification are so glaring that the court can entertain no 
doubt as to that point, it would be most unjust to restrain 
the defendant from using a machine, or other thing which 
he may have constructed, probably at great expense, until 
a decision at law can be had. Where the bill states a 
clear right to the thing patented, which, together with the 
alleged infringement, is verified by affidavit, if the patentee 
has been in possession of it, by having used or sold it in 
part, or in the whole, the court will grant an injunction, and 
continue it till the hearing, or further order, without sending 
the plaintiff to law to try the right. But, if there appeared 
to be a reasonable doubt as to the plaintiff's right, or as to 
the validity of the patent, the court will require the plaintiff 
to try his title at law, sometimes accompanied with an order 
to expedite the trial, and will permit him to return for an 
account, in case the trial at law should be in his favor. 

§ 313. It appears, therefore, that upon the question of first 
sending the plaintiff to law to try the validity of his patent, 
the general rule must be subdivided according to the aspect 
and position of the case before the court. The cases may 
be ranged under three different classes. First, where there 
is nothing before the court, as evidence, but the bill and the 
affidavits in support of it ; second, where th# injunction is 
asked before the final hearing, and the respondent offers 
evidence, either in the answer, or by affidavits, affecting the 
validity of the patent; third, where the question comes on 
upon the hearing, and the full proofs taken in the cause. 

^ 314. These different aspects of the cause may now be 
considered separately, with reference to this question. First, 
where the plaintiff asks for an injunction upon the bill and 
affidavits, and no opposing evidence is adduced, but the 
respondent appears and objects. In such cases, the bill and 
the affidavits must show the issuing of the patent, and an 



164 LAW OF PATENTS. 

exclusive possession of the right of some duration ; and, 
when these are shown, although the court may feel some 
doubts as to the validity of the patent, the injunction will 
be granted without a previous trial at law ; but if the patent 
contains glaring defects, so that no doubt can be entertained, 
or the bill is defective in material allegations, the injunction 
will not be granted, but the plaintiff will be required to try 
his title at law. Some additional evidence, besides the mere 
issue of the patent, must be offered ; and this evidence will 
be the fact, that after he had procured his patent, the plain- 
tiff proceeded to put that right into exercise or use for some 
time, without being disturbed ; a circumstance that strength- 
ens the probability that the patent is good, and renders it so 
likely, as alone often to justify the issue of an injunction in 
aid of it. It will also be further additional evidence, in 
support of the prima facie right to an injunction, that the 
patentee has successfully prosecuted other persons for violat- 



§ 315. Secondly. Where the injunction is asked for before 
the hearing, but opposing evidence is adduced by the re- 
spondent against the validity of the patent. In these cases, 
several elements enter into the rule that is to guide the 
discretion of the court. How far, and for what length of 
time, there has been an exclusive possession or assertion of 
the right; how far the respondent has succeeded in raising 
doubts as to the novelty of the invention, or as to its being 
a patentable subject, or as to the infringement; and how far 
a long possession will go to counteract evidence impeaching 
the validity of the patent — are some of the circumstances 
to be weighed in determining whether the plaintiff's prima 
facie right to an injunction has been answered by the re- 
spondent to that extent, that the court will suspend the 
injunction until the plaintiff has established his right by an 
action. It seems to be the result of all the authorities that 
there is a prima facie right to an injunction, without a trial 



REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 165 

at law, upon certain things being shown, namely, a patent, 
long possession, and infringement. The question will 
therefore be, in cases of opposing evidence, where that 
right has been shown, whether it has been displaced by the 
respondent. 

§ 316. When the presumption in favor of the validity of 
the patent has been strengthened by evidence of enjoyment 
and possession undisturbed for several years, and recoveries 
against other persons for violating it, it will not be sufficient 
to deprive the plaintiff of the injunction before a trial at law, 
for the defendant to read affidavits tending to cast doubts on 
the originality of the invention, especially if that evidence 
is answered by what is stronger on the part of the patentee. 

^ 317. But when an injunction is asked before the trial 
and resisted, and doubts are cast on the originality and 
validity of the patent, if the counterbalancing and fortifying 
circumstances of long possession, use, or sale to a consider- 
able extent, and former recoveries under it, do not exist, the 
injunction will not be allowed before trial. 

§ 318. If the respondent succeeds in raising doubts both 
as to the exclusive possession and as to the novelty of what 
is claimed, and the evidence on these points is confficting, 
the injunction will be refused until a trial. 

§ 319. If the question of infringement is doubtful, it must 
be tried by a jury ; and in a case of this kind, the court will 
order an action to be brought to try the infringement, the 
respondents being ordered to keep an account, and to admit 
the plaintiff's title to the patent. The same rule would be 
applicable to the granting an injunction in the first instance. 

§ 320. It seems, also, that another element to be con- 
sidered is, the effect of the injunction on the defendant's 



166 LAW OF PATENTS. 

business. As the granting of an injunction rests in the dis- 
cretion of the court exercised upon all the circumstances of 
the case, and as the object of the injunction is to prevent 
mischief, it is said that where irreparable mischief would 
ensue from it to the defendant, it ought not to be granted. 
But this must be understood as applying to a case where the 
plaintiff would not be injured by the delay, but would be 
left in statu quo after a trial establishing the validity of his 
patent; or, at least, where the rights of the plaintiff are 
capable of being fully protected by an account to be kept in 
the interim ; because the object of the court is to preserve to 
each party the benefit to which he is entitled. * 

§ 321. Nor will an injunction be granted, where the 
plaintiff has permitted the defendant to go on and incur 
expense under the expectation of receiving a certain sum, if 
the relations between them are such as to allow of the 
defendant's disputing the plaintiff's right as patentee. But 
it seems that where the defendant is estopped at law from 
denying the validity of the patent, an injunction will be 
granted ; but if there is a real question to be tried, and a 
year's rent for the use of the invention is due, the court will 
order the money to be paid into court, to wait the event of 
the trial. 

§ 322. If the plaintiff shows the necessary possession, and 
an infringement has actually been committed by the defend- 
ant, the injunction will be granted, notwithstanding the de- 
fendant admits the infringement and promises not to repeat it. 

^ 323. Third. The third class of cases is where the 
question of granting the injunction comes on upon the final 
hearing; and here the situation of the parties is entirely 
different from the state of things on an interlocutory motion. 
The object of a bill in equity to protect a patent is a per- 
petual injunction ; and this in general can only be granted 



REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 167 

at the hearing ; and if granted at the hearing, it will neces- 
sarily be perpetual. Objections raised by the defendant, 
therefore, to the validity of the patent, at the hearing, require 
a very different consideration from the court; because the 
question is, whether the court will give any assistance to a 
party, who might have applied for an interlocutory hearing, 
and so have given the defendant an opportunity to have had 
the legal title investigated, but has not done so. In such 
cases, where there are no circumstances shown which would 
have prevented the plaintiff from asking for an injunction in 
the progress of the cause, it will not only not be granted at 
the hearing, but the bill will be dismissed with costs, if it 
has been pending for a long time, and the answer had denied 
the validity of the patent and the fact of infringement. 

^ 324. The next question is, supposing that an injunction 
is not to be granted simply, and without any terms, what course 
is to be taken ? This part of the subject embraces the cases 
where the plaintiff will be sent to try his title at law, without 
an injunction, and the cases where an injunction will be 
granted, but the plaintiff will be required to establish his 
patent at law. The plaintiff will be sent to a court of law, 
to establish the validity of his patent without a previous 
injunction, if he does not show long possession and exercise 
of his exclusive right, where the injunction is resisted by 
evidence which casts doubt on the originality of his invention, 
or on the question of infringement, or where the patent 
contains gross and obvious defects. 

9 325. With regard to the length of time during which 
possession and exercise of the exclusive right must be shown, 
it does not appear that any specific lapse of time has been 
adopted as a standard ; and, indeed, it is manifest that no 
positive rule can be assumed, applicable to all cases. The 
general principle is, as we have seen, that the time elapsed 
between the granting of the patent and the application for an 



168 LAW OF PATENTS. 

injunction must have been sufficient to have permitted 
articles or machines to be constructed by the patentee in 
conformity with his claim, and to be sold publicly and 
repeatedly. It must also appear that the thing has in fact 
been sold publicly, if that is the kind of possession relied on ; 
and where the proof of possession consists of former recov- 
eries, or licenses granted to parties who have been sued and 
have submitted, if it appears doubtful whether such recov- 
eries and submissions were not collusively obtained, the neces- 
sary kind of possession will not be made out, and the right will 
first have to be tried at law. But it does not impair the effect 
of such recoveries or submissions, that they were obtained by 
agreement and without trial, if there was at first a real contest. 

^ 326. Where, however, former use or former recoveries 
are relied upon, as proof of the possession of the exclusive 
right, they must have been under the same patent, or under 
a patent connected in law with that under which the appli- 
cation is made ; otherwise it will not appear that they 
related to the same right. But under our system of amend- 
ing specifications, or of surrendering an old patent and taking 
a new one on account of informalities, the right in contem- 
plation of law remains the same, after the issue of the new 
patent, if it is in fact for the same invention ; and conse- 
quently a former possession under the old patent will be 
ground for granting an injunction, without a previous trial, 
under the amended patent. Usually, where an injunction 
is not granted, but the plaintiff is required to establish his 
title at law, the defendant will be ordered to keep an account 
until the question is determined. It seems, that where both 
parties claim under patents, the court cannot grant an injunc- 
tion until the rights have been tried at law. 

§ 327. The cases where an injunction will be granted, 
but the plaintiff will be required to establish his patent at 
law, do not admit of any very precise classification under a 



KEMEDY m EQUITY TO RESTRAIN INFRINGEMENTS. 169 

distinct rule. The court must exercise its discretion upon 
the circumstances. If the plaintiff has, by proof of posses- 
sion and enjoyment, made out a prima facie case for an 
injunction, it will then be for the court to consider whether 
the nature of the case entitles the defendant to a further 
investigation into the validity of the patent or into the fact 
of infringement. The defendant will have a right to further 
investigation, if he shows that there are any questions of 
fact or of law, which a court of equity does not ordinarily 
undertake to settle; and this investigation will generally be 
ordered to take place in an action at law, although it is 
competent for the court to direct an issue out of chancery. 

§ 328. A denial in the answer, as to the validity of the 
patent, or the fact of infringement, will be sufficient to 
entitle the defendant to further investigation in an action at 
law ; but it has been held that, under our system, if the 
defendant wishes to try the question of originality in an 
issue out of chancery, he must set out in his answer the 
names of places and persons where and by whom the inven- 
tion had previously been used, because the Act of Congress 
peremptorily requires notice of these facts, in a trial of this 
question at law. 

^ 329. The fact of the pendency of an action against 
another party has been held not to be a sufficient ground for 
continuing an injunction, where the novelty of the invention 
was denied in the answer, without putting the plaintiff to 
bring an action against the new defendant. 

§ 330. The practice of the court in dissolving, reviving, 
continuing, or making final injunctions, previously granted, 
is regulated, in general, by the same rules as the practice of 
granting them in the first instance. A motion to dissolve 
an injunction may be made at any time. If made after a 
*t)«,i tias been ordered at law, or while an action at law is 
15 



170 LAW OF PATENTS. 

pending, or while the plaintiff is preparing to bring an action, 
the decision of the court will be made upon the same princi- 
ples which governed the granting of the injunction in the 
first instance; that is to say, the defendant will not succeed 
in displacing the plaintiff's prima facie right to an injunc- 
tion merely by filing an answer, or reading affidavits casting 
doubts on the validity of the patent, provided the plaintiff is 
guilty of no unreasonable delay in bringing on the trial; 
especially if the plaintiff adduces auxiliary evidence in favor 
of his right. 

^ 331. Where the motion to dissolve is made after a trial 
at law has been had, the court will have to look at the result 
of that trial, and will be governed by the position in which 
the plaintiff's right has been left. If the proceedings at law 
are not in a, state to be regarded as final, the court will 
choose to be informed as to the further questions which 
remain to be investigated. If a verdict has been rendered 
for the plaintiff, but a new trial has been or is to be moved 
for, and if the court can see that there is a question on which 
an argument might be addressed to the court of law, which 
might induce it to grant a new trial, the injunction will not 
be continued, as a matter of course, but the court will en- 
deavor to leave the parties in a situation that will produce, 
on the whole, the least inconvenience, having regard to all 
the circumstances of their respective situations. 

^ 332. Sometimes the court will direct a motion for an 
injunction to stand over, when none has been granted, until 
it can be ascertained what the result of an application for a 
new trial is to be ; and where a rule, to show cause why a 
new trial should not be had, had been granted, an injunction 
was refused, it not having been allowed before. 

§ 333. This course of proceeding shows that when a new 
trial has been or is intended to be applied for, a court of 



REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 171 

equity will generally leave the parties in the situation in 
which they stood before the trial. If no injunction had been 
previously granted, the court will not increase the defendant's 
burdens by imposing one, as long as the plaintiff's right 
remains doubtful at law. But if an injunction has been 
granted, and the plaintiff has succeeded at law, it would 
seem that the injunction ought not to be dissolved, on the 
mere suggestion that there is ground for a nev\' trial, unless 
the court sees sufficient ground of doubt of the plaintiff's 
right; but that the court will exercise its discretion, and, if it 
sees reason for dissolving the injunction, it will direct the 
defendant to keep an account pending the discontinuance of 
the injunction, in order that, if it finally turns out that the 
plaintiff has a valid patent, he may receive amends for the 
injury occasioned by the resistance to his just demands. 
After a trial and judgment at law, in favor of the plaintiff, 
the injunction will be revived or granted as matter of course. 

§ 334. An important part of the remedial process in 
equity is the account of profits made by the defendant. 
Sometimes an account is ordered to be kept, in lieu of 
granting or continuing an injunction, and it is always 
ordered when the injunction is made perpetual, unless the 
amount would be very small. The cases in which an ac- 
count is ordered to be kept either with or without an injunc- 
tion, during the pendency of an action in which the right is 
to be tried, proceed upon the principle that the plaintiff may 
turn out to be entitled to the right, and he is more secure of 
ample justice if the account of the defendant's profits is kept 
while he is using the invention, than if it were deferred to 
be taken at a future time, especially if the defendant is left 
at liberty to make new contracts. Such an account will be 
ordered, if the injunction is dissolved by reason of the 
irreparable injury it would do to the defendant's business. 

§ 335. Sometimes, as a further means of doing justice 



172 LAW OF PATENTS. 

between the parties, upon the question of infringement, 
when an action at law is to be tried, the court will order a 
mutual inspection of the plaintiff's and defendant's works. 
The object in so doing is to enable the parties, on the trial, 
to give such evidence as will tend to prove or disprove the 
fact of infringement. For this purpose inspectors or viewers 
are appointed, under the direction of the court, who are to 
be admitted as witnesses on the trial at law. If the parties 
do not agree on the persons to be appointed, the court will 
appoint them, 

§ 336. When the validity of the patent is fully estab- 
lished, an account will be ordered of all the profits made by 
the defendant, to be taken by a master; and if the patent 
has expired, the account and the injunction will extend to 
all the articles piratically made during the existence of the 
patent, though some of them may remain unsold. 
% 

^ 337, An injunction should not be dissolved merely on 
account of doubts as to the validity of the patent, which 
arise from objections to the technical form or signature of 
the letters, or other acts or omissions of the public officers, 
and not from any neglect or wrong of the patentee. 

^ 338. Upon the question of granting an injunction 
against a party who has had the use of the invention by 
permission or grant of the patentee, the doctrine seems to 
be this. A party who has had such use of an invention, 
under a contract for an annual rent, or other estimated rate 
of payment, may discontinue the payment, and, if he still 
use the invention, the patentee may sue him for the rent 
due, or for an infringement. If an action is brought for the 
rent, and the defendant is not estopped by the terms of his 
contract from denying the validity of his patent, the plaintiff 
cannot recover without giving him an opportunity to do so. 
The same is true under an action for the infringement, if 



REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. 173 

the defendant is not estopped. Where, therefore, a court 
of equity does not see that the defendant is estopped from 
denying the validity of the patent, but that he has a right 
to resist the patent, it will deal with a defendant who has 
used under a license or other contract, or under permission, 
upon the question of injunction, as it deals with other 
defendants ; and, as we have seen, if the bill which prays 
for an injunction, also shows that rent is due by contract, 
the court will order the money to be paid into court, to 
await the result of an action at law. 

§ 339. It has been held that in a bill in equity for a 
perpetual injunction, it is a good defence that, prior to the 
granting of the patent, the inventor had allowed the inven- 
tion to go into public use, without objection ; but that it 
should be clearly established, by proof, that such public use 
was with the knowledge and consent of the inventor. This 
is the same as one of the statute defences against an action 
at law, which may all be made, pursuant to the statute, in 
equity, if the defendant chooses, although the statute has 
expressly made them defences only in an action at law. 

§ 340. If the patentee, after obtaining his pate at, dedi- 
cates or surrenders it to public use, or acquiesces for a long- 
period in the public use of his invention, without objection, 
he is not entitled to the aid of a court of equity to protect 
it; and such acquiescence may amount to complete proof 
of a dedication or surrender to the public. The ground 
upon which a court of equity refuses to interfere in such 
cases, is, that by his own conduct the plaintiff may have led 
or encouraged the defendant to make use of his invention. 

^ 341. But although it is a principle of equity, that a 

patentee must not lie by, and by his silence or acquiescence 

induce another to go on expending his money and incurring 

risk, and afterwards, if profit is made, come and claim a 

15^ 



174 LAW OF PATENTS. 

share in the profit, without having been exposed to share in 
the losses ; yet delay to institute his proceedings may be 
^ explained by the difficulty of getting evidence of the in- 
fringement. 

§ 342. It has already been stated that in all cases of 
proceedings in equity to restrain the infringement of patents, 
in the courts of the United States, the injunction can, at no 
time, be applied for without notice to the adverse party, 
giving him an opportunity to oppose it; and, therefore, the 
injunction is always special. Where the injunction is 
applied for before an answer has been filed, the plaintiff, in 
addition to the allegations in his bill, must read afiidavits to 
show his title, and the fact of infringement, especially if 
the defendant appears and offers evidence against the one 
or the other; and these affidavits should, in strictness, cover 
the issuing of the patent, the novelty of the invention, and 
all other facts necessary to the title. It is believed, how- 
ever, that in our practice, where the whole title is set out in 
the bill, which is sworn to, if the defendant does not read 
affidavits denying the title, it is not usual to read them in 
support of the title, which is considered as verified by the 
bill itself. But, if the defendant attacks the title by affi- 
davit, it must be supported by auxiliary proof in addition to 
the bill, in order to make out the prima facie right to an 
injunction. 



i 



CHAPTER IV. 



^ 343. The evidence appropriate to the different stages 
of a patent cause may be divided into (1) the evidence of 
title, and (2) the evidence upon the point of infringement. 
Evidence of title relates to the letters-patent, and the plain- 
tiff's interest therein, the novelty and utility of the inven- 
tion, and the sufficiency of the specification. Evidence of 
the infringement relates to the identity of the thing made, 
used, or practised, by the defendant, with the invention of 
the patentee. 

^ 344. I. As to the plaintiff's title. With regard to the 
letters-patent, the statute of 1836, §§ 4, 5, makes a copy 
under the seal of the Patent Office and the signature of the 
commissioner, competent evidence that a patent has been 
granted by the government for the invention described in 
the specification annexed. If the patent produced in evi- 
dence refers to the description in a former patent, it is 
necessary to produce and read that former patent, in order 
to show what the invention is, if it is not made entirely 
clear and intelligible by the patent on which the action is 
brought. 

§ 345. The letters-patent being thus proved to have 
issued, they are prima facie evidence that the patentee was 
the first inventor of the thing patented. The reason upon 
which this is held is, that the statute requires the patentee 
to make oath that he is the first and true inventor of the 
thing; and when the patent has issued, supported by this 
oath, the burthen of proof is cast upon the party who would 



176 LAW OF PATENTS. 

object, to show that the grant has been improperly obtained 
by the patentee; because the law presumes, in the first 
instance, that the patent has been granted upon the proofs 
which the statute requires to be laid before the officers of 
the government, and that those proofs were satisfactory. 

§ 346. When the patentee wishes to strengthen this 
evidence, either in the opening of his case, or to rebut any 
evidence offered by the defendant which may have tended 
to show that he was not the first inventor, he can only call 
persons who were in the way of hearing of the invention if 
it had existed before, to testify that they have not heard of 
it. The proposition which the plaintiff has to establish is, 
strictly, a negative ; he is to prove that the invention did not 
exist before ; and, therefore, as has been said, he must pro- 
ceed by exhausting the affirmative instances of it, by calling 
those persons who might have known of it, if it had existed 
before, but who never have heard of it ; and the more those 
persons, from their acquaintance with the particular trade or 
manufacture, were in the way of hearing of or meeting with 
it, the stronger the evidence will be. 

^ 347. Although this evidence is only general and nega- 
tive, it is not, on that account, without weight. To illustrate 
its force, as well as its proper office, we may suppose a case, 
where the defendant had succeeded in showing that some 
prior inventor had made experiments in the same line as the 
patentee, and that this evidence goes so far as to show that 
that person had probably accomplished the same result as the 
patentee ; but the point is still left in doubt, whether he had 
actually reached and perfected the invention for which the 
plaintiff has obtained a patent. The rule of law in such 
cases is, that if the prior efforts of some preceding inventor 
rested in experiment alone, his experiments, however near 
they may have been carried to the complete production of 
the thing, will not prevent a subsequent more successful 



EVIDENCE. 177 

inventor, who has produced the perfect result at which both 
may have aimed, from obtaining a valid patent. The ques- 
tion for the jury will therefore be, in such cases, whether 
the efforts of the prior inventor rested in experiment alone, 
without coming to the point of completion, both in the 
theory and the actual application of the invention. Upon 
this question, the fact that the invention was never heard of 
until it was known to have proceeded from the present 
patentee, is of great weight. If it had been heard of among 
those persons who make it the business of their lives to 
know what is going on in the particular trade or art which 
it concerns, or to know what inventions in all arts or trades 
are from time to time produced, prior to the time when it 
was made by the patentee, the presumption would be very 
strong, that the person who is proved to have made near 
experiments towards it had actually accomplished the perfect 
result. Still the evidence would not be conclusive, because 
the report that such an invention had been made might have 
arisen from what had been done in the way of experiment 
alone. Bat it would be very strong presumptive evidence 
that |he experiments had terminated successfully, if persons 
who were in the way of hearing of such inventions should 
testify that they had heard of such an invention having 
been announced, although they had not seen it. On the 
other hand, if such persons had not heard of such an inven- 
tion, the evidence would not show conclusively that the 
prior experiments rested in experiment alone, but it would 
have a very strong tendency to establish this conclusion, 
because there is an irresistible tendency in inv-entions to 
become known, as to their results, if not as to their processes, 
whenever the results are accomplished. 

§ 348. There is one other species of evidence, applicable 
to the issue of novelty, when the question is as to the time 
when the patentee had completed his invention. It may be 
necessary for the plaintiff to rebut evidence offered by the 



178 LAW OF PATENTS, 

defendant as to the invention and use of the same thing by 
other persons before the date of his patent, and hence it may- 
be important to show the precise time when the invention 
was completed by the patentee. For this purpose, the 
patentee may give in evidence, to some extent, his own 
declarations, describing the nature and objects of the inven- 
tion. 

§ 349. Sometimes the issue of novelty involves the iden- 
tity or diversity of the thing patented, compared with some- 
thing before known or used, on which the defendant relies 
to defeat the patent. The nature of the evidence, and the 
sources from which it is to be drawn, are the same upon this 
issue as when the question of identity or diversity arises 
under the issue respecting an infringement ; and the con- 
sideration of the principles of evidence on both of these issues 
may here be postponed until we come to the general discus- 
sion of the question of identity. 

§ 350. The plaintiff must also offer some evidence of the 
utility of his invention. The degree of utility, as we have 
seen, is not material; but the invention must be capable of 
some use, beneficial to society. This is ordinarily proved 
by the evidence of persons conversant with the subject, who 
may be called to sa}'- whether the thing invented is or is not 
capable of the use for which it is designed, or whether it is 
an improvement upon what had been in use before. But it 
may also be proved by other testimony, which will show 
that large orders have been given for the article by the pub- 
lic, or that licenses have been taken for the exercise of the 
right. 

^ 351. The plaintiff, in addition to the prima facie 
evidence of the novelty of his subject-matter, must also offer 
some proof of the sufficiency of his specification. In other 
words, he must show, to use the language of the statute, that 



EVIDENCE. 179 

his specification is " in such full, clear, and exact terms as to 
enable any person, skilled in the art or science to which it 
appertains, to make, construct, compound, or use," the thing 
patented. This may be apparent to the jury on the face of 
the specification itself, from its simplicity and the absence of 
technical terms and descriptions ; but where the invention 
is at all complicated, or terms of art or science are made use 
of requiring the exercise of technical knowledge to deter- 
mine whether the specification is sufficient, it is at least 
advisable if not necessary, for the plaintiff, in opening his 
case, to give some evidence that his specification can be 
applied by those to whom the law supposes it to be ad- 
dressed. If the sufficiency of the specification is disputed, 
the plaintiff must go into evidence to sustain it. How much 
of this evidence may properly be reserved for answer to the 
defendant's case, and how much should be introduced in the 
plaintiff's opening, must depend on the circumstances of the 
trial, although it may be stated, as a general rule, that slight 
evidence of sufficiency is all that is necessary to be offered 
at first, in order to make it incumbent on the defendant to 
falsify the specification. 

^ 352. The nature and source of the evidence, to show 
the sufficiency of a specification, present a topic of much 
interest, under that somewhat difficult branch of the law of 
evidence which relates to experts. What is the meaning 
of the statute, when it refers to the ability of persons 
" skilled in the art or science " to which the invention 
appertains, " or with which it is most nearly connected," to 
make, construct, compound, and use the same ? Does it 
mean to adopt as witnesses those only who have the practi- 
cal skill of artisans in the art or science, and to make their 
ability to understand and apply the specification the test of 
its sufficiency ; or does it include that higher class of persons, 
who, from general scientific knowledge, or from a theoreti- 
cal acquaintance with the principles of the art or science 



180 LAW OF PATENTS. 

involved, might be able to teach an artisan or practical 
workman how to practise the invention ? It is apparent that 
both of these classes of persons may be within the literal 
meaning of the phrase "skilled in the art or science;" but 
the question is, whether the law contemplates one only, or 
both of them, as the proper witnesses to determine the 
sufficiency of a specification. It seems to me very clear, 
that the law means to adopt, as a general standard of the 
sufficiency of a specification, the ability of skilful practical 
workmen to practise the invention from the directions given 
in the specifications. The standard of acquirement and 
knowledge may vary with the nature of the subject-matter ; 
but where the invention falls within the province of an art 
or science, which is practised by a particular class of 
mechanics, operators, manufacturers, or other workmen, 
who possess, and whose vocation it is to apply, technical 
knowledge, in that particular branch of industry, the patent 
law refers to their capacity to take the specification and 
carry out in practice the direction which it contains, without 
invention or addition of their own. 

§ 353. Thus, if the invention be a pump, or of some 
improvement in pumps, the question will be whether a 
pump-maker of ordinary skill could construct one upon the 
plan given in the specification, from the directions given. 
If it be a composition of matter, falling within the art of 
practical chemistry, the question on the specification will be 
whether its directions are so clear and intelligible, that a 
practical chemist of ordinar}'- skill could make the com- 
pound, by following out the directions. If it be a process, 
involving the application of a principle in physics to a par- 
ticular branch of manufacture, to be carried into effect in a 
particular manner, the question will be whether the direc- 
tions, if fairly followed out by a competent workman, of the 
class ordinarily employed to construct an apparatus of that 
kind, would produce the effect intended. This seems to be 



EVIDENCE, 181 

the general rule, applicable to a very large proportion of 
the inventions which become the subjects of patents ; and 
accordingly it may be stated as a general rule that the prop- 
er witnesses to determine on the sufficiency of a specifica- 
tion are practical workmen of ordinary skill in the particu- 
lar branch of industry to which the patent relates, because 
it is to them that the specification is supposed to be ad- 
dressed. 

§ 354. At the same time, there may be another class of 
witnesses, of much higher character, competent to be exam- 
ined on this point. These are persons who possess a 
thorough scientific knowledge, of a theoretical nature, of the 
principles of the art or science to which the patent relates, 
but who do not, as an habitual occupation, devote them- 
selves to the application of those principles in the practical 
exercise of that art, science, or manufacture. Such persons 
may, without doubt, be examined as to the sufficiency of a 
specification ; but the question which should be propounded 
to them, in cases where there is a recognized class of practi- 
cal workmen who would be called upon to apply the direc- 
tions of the specification, is, whether a person of that class, 
of ordinary skill, could practise the invention from these 
directions. There does not seem to be any authority which 
goes the length of saying that a specification, in cases of this 
kind, would be good, if every competent artisan who might 
be called were to testify that he could not apply the direc- 
tions successfully, provided a scientific witness of the other 
class were to testify that he could teach or demonstrate to 
an artisan how to apply them ; although proof may be 
offered of the opinions of scientific witnesses, that a particu- 
lar means which might be used to carry out the general 
directions of a specification, would succeed, without showing 
that that means had actually been tried and had succeeded. 

§ 355. Whether there is a class of inventions, addressed 
16 



182 LAW OF PATENTS. 

SO entirely to scientific witnesses, as to render their knowl- 
edge and skill requisite, in the practical application of the 
directions, so that there cannot be said to be any recognized 
class of artisans, to whose capacity the directions can be 
referred, is another question. This must depend on the 
nature of the invention. 

<§> 356. Before it can be determined, in any case, what 
class of persons are to be taken as those whose ability to 
apply the directions furnishes the standard of the sufficiency 
of the specification, it must first be ascertained to what class 
of persons the specification is presumed to be addressed, as 
being those who are to carry out the directions. If the 
inquiry arose after the patent had expired, this class of per- 
sons would, in most cases, be readily ascertained, by observ- 
ing what persons applied themselves to the practice of 
the invention. But it actually arises before the patent has 
expired, and before its dedication to the public enables us to 
see what persons will undertake to practise the invention. 
That state of things must, therefore, be anticipated, so far as 
to ascertain what persons will undertake practically to carry 
out the directions of the patent, for the purpose for which 
the invention is designed. The standard, therefore, will 
vary greatly, according to the nature of the invention. In 
some cases, the persons who will undertake to practise it 
will be very numerous, in others, very limited, in point of 
numbers. In some cases, the qualifications will be very 
moderate ; in others, a very high state of accomplishment, 
skill, and knowledge, will be requisite. The nature and 
objects of the invention must be resorted to, to see to what 
persons the specification is to be presumed to be addressed. 
If it be a machine destined to a particular use, the workmen 
whose vocation it is to make similar machines, for similar 
purposes, will be the persons who would be called upon to 
make the machine after the patent has expired. If it be a 
composition of matter, involving the knowledge of practical 



EVIDENCE. 183 

chemists, such persons will attempt to practise the invention, 
when they are at liberty to do so. If it be a manufacture 
of an improved character, the persons whose business it has 
been to make the old article will be the persons who will 
make the new one. In all these and similar cases, where there 
is a class of workmen who are habituated to the practical exer- 
cise of the art or science under which the patented invention 
falls, the specification is to be presumed to be addressed to 
them ; and, although scientific witnesses may be examined, 
as to the clearness and fulness of the specification, its suf- 
ficiency must be referred to the ability of competent practical 
workmen, of ordinary skill, to understand and apply it. This 
limitation of the evidence follows, necessarily, from the 
principle that the specification cannot be supported hy the 
fresh invention and correction of a scientific person. The 
ordinary knowledge and skill of practical workmen being the 
standard, where the specification is for the benefit of a par- 
ticular trade, the evidence cannot be carried so far as to 
include the degree of skill and knowledge possessed by a 
scientific person, who could, on a mere hint, invent the thing 
proposed to be accomplished ; although such a witness may 
be asked, whether a competent workman could attain the 
object of the patent, by following out the directions. 

^ 357. But if the invention be of a character entirely- 
novel, embodying an effect never before produced, and which 
it is not within the province of any particular class of work- 
men to produce, but which it belongs rather to the province 
of men possessed of some science to apply, by directing the 
labors of common artisans, upon principles which such arti- 
sans do not commonly understand or undertake to use, then, 
the specification may be presumed to be addressed to men 
capable of applying those principles, and not to mere artisans, 
who have previously been employed in the construction of 
things of the same class which it is the object of the inven- 
tion to supersede. Thus, in the case of an invention which 



184 LAW OF PATENTS. 

consisted in an improvement on paddle-wheels for propelling 
vessels, by a mode of constructing them so that the floats 
might enter and quit the water at any required angle, the 
specification would be addressed to engineers capable of 
determining what angle was required, and it ought to 
furnish the rules by which such persons could ascertain the 
angle, and the mechanical means by which it could be ap- 
plied in practice. The understanding of such a specification 
would be somewhat above the range of acquirements belong- 
ing to mechanics employed in the manual labor of construct- 
ing the machinery ; that is to say, the specification would be 
addressed to competent engineers, of ordinary skill in that 
profession. 

^ 358. But it should be remembered, that whenever, in a 
case of this kind, as in all other cases, the persons to whom 
the specification is to be presumed to be addressed, have 
been ascertained, a rule becomes applicable, which defines 
the nature and scope of the evidence that may be offered, to 
explain the specification. This rule is, that the patentee 
must not, in framing his specification, call upon the persons 
to whom it is addressed to exercise more than the actual 
existing knowledge common to their trade or profession. He 
has a right to exhaust this knowledge ; but if, in order to 
apply his directions, the members of the trade or profession 
are required to tax their ingenuity or invention, so that, 
beyond the exercise of ordinary and competent skill, they 
would have to solve a problem, or supply something, in the 
process, by the exercise of the inventive faculty ; the speci- 
fication would be bad. 

§ 359. II. As to the Infringement. Upon the question 
of infringement, the point to be determined is, whether the 
thing made or used by the defendant is, in the sense of the 
patent law, identical with the invention of the patentee. 
This is the same question as that which arises on the issues 



EVIDENCE. 185 

of novelty, when it is necessary to determine whether the 
invention of the patentee is the same as some former thing, 
or different, and therefore entitled to be regarded as a nov- 
elty. We may, therefore, here consider the principles of 
evidence applicable to the inquiry, whether two things are 
identical iu the sense of the patent law. 

^ 360. It is obvious that there may be two kinds of evi- 
dence applicable to this issue, both of which may be drawn 
from experts. Whether one thing is like another, is a 
matter of judgment, to be determined on the evidence of our 
own senses, or the senses of others. If we rely on the senses 
of others, the sole testimony which they can bear, is, either as 
to the matters of fact which constitute the precise differences 
or resemblances between the two things, or as to matter of 
opinion, by which they infer that these differences or resem- 
blances do, or do not, affect the question of the substantial 
identity of the two things. Both of these kinds of evidence, 
however, run so nearly into each other, and the boundaries 
between them are often so shadowy, that it is sometimes 
difficult to draw the line between fact and opinion. The 
actual differences or resemblances between two things are 
primh facie matters of fact, to be observed by the senses ; 
but with the act of observing these differences or resem- 
blances we blend the process of reasoning, by which we 
determine, for our own satisfaction, what is a real, and what 
only an apparent, difference or resemblance ; what consti- 
tutes a difference or resemblance, in point of principle; and 
the result of this process, expressed in the conclusion, that 
the two things are, or are not, identical, is matter of opinion. 
Between these two branches of evidence, it is exceedingly 
difficult to draw the line, so as to define the true office of an 
expert and to admit all proper evidence of fact and opinions, 
without leaving to the witness the whole determination of 
the issue. 

16* 



186 LAW OF PATENTS. 

§ 361. At the same time, it is certain that a boundary- 
exists somewhere. The question where two things are iden- 
tical, in the sense of the patent law, is a mixed question of 
law and fact; and when it is submitted to a jury, it is for 
the court to instruct them, after the actual differences or 
resemblances are ascertained, what constitutes, in point of 
law, a difference or identity. There is, therefore, a most 
important function to be discharged, if one may so say, by 
the law itself; for it has to determine, upon all the facts 
open to the observation of the senses, whether guided by the 
superior facility for observation enjoyed by experts, or not so 
assisted, whether, in the sense of the law, there is an identity 
or a difference. This function is always in danger of being 
encroached upon, by a loose mode of receiving the testimony 
of experts, by whom the whole question is often in reality 
left to be decided. 

^ 362. The testimony of persons skilled in the particular 
subject is undoubtedly admissible, for two purposes : Jirst, to 
point out and explain the points of actual resemblance or 
difference ; secondly, to state, as matter of opinion, whether 
these resemblances or differences are material ; whether they 
are important or unimportant ; whether the changes intro- 
duced are merely the substitution of one mechanical or 
chemical equivalent for another, or whether they constitute 
a real change of structure or composition, affecting the sub- 
stance of the invention. But when these facts and opinions 
have been ascertained, the judgment of the jury is to be 
exercised, upon the whole of the evidence, under the instruc- 
tions of the court as to what constitutes such a change as 
will in point of law amount to a fresh invention, and, there- 
fore, will not be an infringement. 

§ 363. The duty of giving this instruction should not be 
surrendered by the court. A scientific witness may be asked, 
for instance, whether, in his opinion, a particular machine is 



EVIDENCE. 187 

substantially new in its structure, or mode of operation, or 
whether it is substantially the same thing as another, with 
only apparent differences of form and structure. But when 
the differences or resemblances have been pointed out, and 
when the view that science takes of their relative importance 
has been ascertained; when the fact appears of whether a 
particular change is or is not regarded by mechanicians as 
the substitute of one mechanical equivalent for another, 
the court must instruct the jury, whether the particular 
change amounts, in point of law, to a change of what is 
commonly called the principle of the machine. This is 
a question wholly aside from the function of a witness. 
The most skilful and scientific mechanician in the world 
can only say what, in his opinion, are the differences or 
resemblances between one machine and another, and how 
far they are regarded by mechanicians as material or sub- 
stantial. But the question of what constitutes a fresh 
invention, or what, upon a given state of facts, amounts to a 
change so great as to support an independent patent for a 
new thing, is a question of law ; and this question is involved 
in every issue as to the identity of two things, whether it 
relates to the question of infringement or of prior invention. 

§ 364. The evidence for the defendant, upon the question 
of novelty, will of course consist of proof, positive in its 
nature, that the thing patented existed before ; and if any 
credible evidence of this is adduced, it will outweigh all the 
negative evidence that can be offered by the plaintiff. But 
whenever the defendant relies on the fact of a previous 
invention, knowledge, or use of the thing patented, he nmst 
give notice of the names and places of residence of the 
persons who he intends to prove have possessed a prior 
knowledge or had a prior use of it. 

§ 365. Persons who have used the machine patented are 
not thereby rendered incompetent as witnesses, on account 
of interest. It has been held that a witness who was pa- 



188 LAW OF PATENTS. 

tentee in another patent, and had sold to the defendant the 
right to use the machine, the use of which was complained 
of as an infringement, was a competent witness, since any 
verdict that the plaintiff might recover could not be given in 
evidence by the plaintiff in an action against the witness. 
A patentee who has assigned the whole of his interest in 
the patent, is a competent witness for the assignee in sup- 
port of it, A licensee is a competent witness for the patent, 
in an action for an infringement, for he has no direct pecu- 
niary interest in supporting the patent, but it may be for his 
advantage that it should not be supported. Evidence, on 
the part of the plaintiff, that the persons, of whose prior use 
of a patented machine the defendant had given evidence, 
had paid the plaintiff for licenses, ought not to be absolutely 
rejected, though entitled to very little weight. 



CHAPTEE V. 

QITESTIONS OF LAW AND QUESTIONS OF FACT. 

§ 366. The several provinces of the court and the jury, 
in the trial of patent causes, have already been incidentally 
alluded to ; but it may be useful to practical men to give 
here a summary of the principal questions which constitute 
matters of fact and matters of law. 

^ 367. The question of novelty is a question of fact for 
the jury. It embraces the two questions of whether the 
plaintiff, or patentee, was the inventor of the thing- patented, 
and whether the thing patented is substantially different from 
anything before known. These are questions of fact for the 
jury upon the evidence. But it is for the court to instruct 
the jury what constitutes novelty in the sense of the patent 
law, as well as what amounts to a sufficiency of invention 
to support a patent. So, also, the question of prior public 
use is a question of fact. 

§ 368. The question whether the renewed patent is for 
the same invention as the original patent, is also a question 
of fact for the jury; as is likewise ihe question whether the 
invention had been abandoned to the public. 

§ 369. The question of utility is a question of fact, under 
some circumstances, and under other circumstances it may 
be for the court, without referring it to the jury, to pronounce 
the patent void. We have seen that a " useful invention," 
in the sense of our law, is one not injurious or mischievous 



190 LAW OF PATENTS. 

to society, and not frivolous or insignificant, but capable of 
use for a purpose from which some advantage can be de- 
rived ; and that v/hen an invention is useful in this sense, 
the degree or extent of its usefulness is wholly unimportant. 
There are, therefore, two modes in which the utility of an 
invention may be impeached : first, when it appears, on the 
face of the letters-patent and specification, that the invention 
is injurious to the morals or health of society; secondly, 
when it appears, on the evidence, that the thing invented, 
although its object may be innocent or useful, is not capable 
of being used to eflTect the object proposed. 

§ 370. The question whether the invention is useful, in 
the first sense, is a question whether the patent is void, on 
the face of it, as being against public policy; or, in other 
words, because the subject-matter disclosed by the patent is 
not a patentable subject. This is a question of law for the 
court. But when it does not appear that the invention has 
any noxious or mischievous tendency, but on the contrary 
that its object is innocent or salutary, there may be a further 
question, whether the means by which the inventor professes 
to accomplish that object will in practice succeed or fail. It 
is not essential to the validity of a patent that the success 
of the means made use of should be complete, or that the 
thing invented should supersede anything else used for the 
same purpose ; because the law looks only to the fact that 
the invention is capable of some use. Thus, if a machine is 
useful for some of the cases for which it is intended, although 
cases may occur in which it does not answer, it is still useful, 
in this sense of the patent law; but if anything claimed as 
an essential part of the invention is useless altogether, the 
patent is invalid, because there is a total failure in point of 
usefulness. These questions, whether the invention is 
capable of use for the purpose for which it is claimed, and 
whether anything claimed as essential is entirely useless, 
depend upon evidence, and are questions of fact for the jury. 



QUESTIONS OF LAW AND QTJESTIONS OF FACT. 191 

§ 371. In like manner, the question whether an invention 
is frivolous or insignificant, is a question of law. If the 
object proposed to be accomplished is a frivolous or insig- 
nificant object, from which no advantage can be derived to 
the public, it is for the court to pronounce the patent void, 
as not being for a patentable subject. But if the object 
proposed is not clearly frivolous and unimportant, but the 
means by which it is proposed to be accomplished do not 
succeed in producing the result, the question returns to the 
usefulness of the means, and this again becomes a question 
of fact for the jury. 

§ 372. The construction of the specification, as to the 
extent of the claim, belongs to the province of the court. 
The court must determine, upon the whole instrument, 
what the claim actually covers, and whether the patent is 
valid in point of law. The jury are, therefore, to take the 
construction of the patent, as to the extent of the claim, 
from the court, and to determine whether anything that is 
included in the claim is not new. But if the specification 
contains terms of art, which require explanation, by means of 
evidence, it is for the jury to find the meaning of those terms. 

^ 373. And here it is very important to ascertain whether 
there are any principles which are to guide the court in 
construing patents, peculiar to these instruments, or whether 
they are to be construed in all respects like other written 
instruments, and without the aid of extrinsic evidence. In 
one sense, a patent is a deed, being a grant of the govern- 
ment under seal; the letters-patent, the specification, and 
the drawings annexed, being taken together as one instru- 
ment. But it often happens that the extent of the claim is 
not manifest on the face of the specification itself. The 
question arises, therefore, how is the court to ascertain the 
precise extent of the claim, as matter of law? The specifi- 
cation is a v^rritten instrument, in which the patentee has 



192 LAW OF PATENTS. 

undertaken to state the invention which he professes to have 
made, and for which he has obtained letters-patent. In 
determining the real extent of the claim thus made, it is 
obvious that the actual inventitm of the party is a necessary- 
auxiliary to the construction of the language which he has 
employed in describing it. The thing of which the patentee 
was the real inventor is what he was entitled to claim, and 
the question, in all cases requiring construction, will be, 
whether he has claimed more or less than that thing, or 
exactly what that thing is. If he has claimed more than 
his actual invention, that is, more than that of which he 
was an original and the first inventor, his claim is inoper- 
ative, under our law, pro tanto. If he has claimed less, his 
exclusive right is restricted to what he has claimed. If he 
has claimed the just extent of his actual invention, he is 
entitled to hold it, in all its length and breadth. 

h 374. There are two sources to which the court is entitled 
to resort in construing a claim. In the first place, resort 
may be had to the descriptive parts of the specification, 
where the patentee has undertaken to state what his inven- 
tion is ; in other words, the court is to inquire what the 
patentee has said that he had invented. If his statement or 
description of the invention is clear and explicit, then the 
language in which he has made his claim, which is generally 
to be found in a summary statement of the subject-matter 
for which he asks a patent, may and should be construed so 
as to include the actual invention previously set forth, if it 
can be so construed without violation of principle ; for the 
general maxim, under which the construction is to be pur- 
sued, is, according to the spirit of the modern authorities, ut 
res magis valeat quam pereat. 

^ 375. But it may be uncertain upon the terms of the 
descriptive parts of the specification, if unaided by evidence, 
what the precise extent of the invention was ; and this may 



QUESTIONS OF LAW AND QUESTIONS OF FACT. 193 

happen, without that degree and kind of ambiguity which 
renders a patent void for uncertainty, or because the direc- 
tions could not be carried out by a competent workman. 
For instance, the patentee may state that he employs some- 
thing which turns out not to be new; and the question will 
then be, whether he has so described that thing as to claim 
it as part of his invention ; — or his invention may be so 
stated, as to render it doubtful whether he has invented or 
discovered the general application of a principle to produce 
a particular effect, and is, therefore, entitled to claim all the 
forms in which the same principle can be applied to produce 
the same effect, or whether he has only invented or discov- 
ered a form of giving effect to a principle the application of 
which was known before. So, too, on the general description 
of a machine, or a manufacture, which, as a whole, may be 
new, it may be uncertain whether the party invented the 
various parts of which that whole is composed, or only 
invented the combined whole, as he has produced it ; and, 
if the latter, whether he invented the whole, as it may em- 
brace all the forms and dimensions in which that whole can 
be produced, or whether his claim is to be confined to cer- 
tain forms and dimensions, there being other wholes, of the 
same general character, of other forms and dimensions, 
which it does not include. 

§ 376. In such cases, the character and scope of the 
invention can only be ascertained by attending to what the 
evidence shows is new or old; to the state of the art; to 
the fact of whether the principle, which the patentee has 
employed, had been discovered and applied before, and, 
therefore, that he could have invented only a new form of 
the application, or, whether he has invented the application 
of the principle itself, and, consequently, is entitled, if he 
has not restricted himself, to claim the same application of 
the same principle, under other forms or dimensions, or by 
other means, tha.n those which he has specifically described, 
17 



194 LAW OF PATENTS. 

The question, whether he has limited himself to particular 
forms, dimensions, or methods, necessarily involves an 
inquiry into the substance and essence of his invention. In 
other words, before it can be ascertained, in doubtful cases, 
what he has claimed, some attention must be paid to his 
actual invention, as ascertained on the evidence. 

§ 377. To what extent, then, is the court entitled to receive 
evidence of the actual invention, and how is that evidence 
to be applied to the construction of the claim ? In the 
progress of a nisi prius trial, the state of the art, the sur- 
rounding circumstances in which the inventor was placed, 
the previous existence of some things mentioned or referred 
to in the patent, will all be likely to be developed on the 
evidence; and these facts may materially affect the con- 
struction to be given to the claim. It has been said, and 
with great propriety, that, in the exercise of the duty of 
determining what the claim is, in point of law, the judge 
must gather as he goes along; informing himself upon the 
evidence, and observing what facts are controverted, and 
what facts are not controverted, which bear upon the mean- 
ing of the claim, in reference to its extent. If the facts 
material to the construction are not left in doubt on the 
evidence, the construction will be given to the jury, abso- 
lutely ; but if the evidence requires a finding of facts by the 
jury, the construction will be given to them conditionally. 

^ 378. Among the facts which will thus exercise an im- 
portant influence on the extent of the claim, is the previous 
existence of something mentioned in the specification. If 
it is manifest on the face of the terms, in which the patentee 
has described his invention, that he has included something 
of which he was not the inventor, his patent cannot be 
allowed to cover it. But it may be doubtful whether he 
has so included the thing which the evidence shows to be 
old ; and then the degree or extent to which that thing was 



QtJESTIONS OF LAW AND QUESTIONS OF FACT. 195 

known before, its great familiarity and constant use for 
analogous purposes, will be important elements in the ques- 
tion, whether the patentee has claimed it as of his own 
invention. This consideration has given rise to the rule, 
that the patentee is to be presumed not to intend to claim 
things which he must know to be in use ; which is only 
another application of the broader rule, that a specification 
should be so read, as, consistently with the fair import of 
language, will make the claim coextensive with the actual 
discovery or invention. 

§ 379. Another important consideration will be the state 
of the art. If, for instance, a patent contemplates the use 
of certain substances, although it may make use of terms 
extensive enough to embrace other substances, which, in the 
progress of the art, have been ascertained to be capable of 
the same use, but at the time of the patent were not known 
to be so, or, being known at the time to be capable of the 
same use, were yet so expensive as not to be expected to be 
in use for the same purpose, the general terms of the speci- 
fication will be so interpreted as to include only those sub- 
stances of the same kind with the particular substances men- 
tioned, which may reasonably be supposed, on the state of 
the art, to have been contemplated at the time. This is to 
be ascertained by evidence. 

§ 380. Thus, on a specification describing "an improved 
gas apparatus, for the purposes of extracting inflammable 
gas by heat from pit coal, or tar, or any other substance from 
which gas or gases capable of being employed for illumina- 
tion jcan be extracted by heat;" it appeared that it was 
known, at the date of the patent, as a philosophical fact, that 
oil would yield inflammable gas, but that the apparatus 
described in the specification could not be used advanta- 
geously, if at all, for the making of gas from oil ; it was 
answered, that it was a general opinion at the time, that 



196 LAW OF PATENTS. 

nothing but coal would be cheap enough for purposes of illu- 
mination ; and the court held that the patentee must be 
understood to mean things that were in use, and not every- 
thing which would produce gas, but, from being so expen- 
sive, was never expected to be in use. 

^ 381. Sometimes, the construction may rest on facts, 
which are so referred to as to make a part of the description 
and to govern it. If these facts are controverted, they are 
to be left to the jury. But if they are proved, or admitted, 
the court will take notice of them in giving a legal con- 
struction to the instrument. Thus, where the question was, 
whether, in the specification of an improvement in the 
machine known by the name of speeder, double-speeder, or 
fly-frame, used for roving cotton, preparatory to spinning, 
the patentee had confined himself to the use of the bow- 
flyer, that is, a flyer in " one continuous piece," as part of 
his new combination ; it appeared that the specification thus 
described the invention: "It will be seen that the flyers, 
as used by me, and shown at, &c., are made in one contin- 
uous piece, instead of being open at the bottom, as is the case 
with those generally used in the English fly-frame, and this, 
among other reasons, enables me to give the increased 
velocity above referred to." The patentee then summed up 
his claim as follows : " What I claim as new, &c., is the 
arrangement of the spindles and flyers, in two rows, in com- 
bination with the described arrangement of gearing," which 
he had previously pointed out. Although the language 
here did not admit of much doubt, as to the kind of flyer 
intended to be claimed, the court took notice of the admitted 
or apparent facts, which tended to show that the bow-flyer 
alone was intended ; one of which was, that the bow-flyer 
alone could be geared, as the patentee had described his 
flyer to be, in two places, through its bottom ; the other form 
of the open-flyer having no bottom susceptible of being used 
or geared in that manner. 



QUESTIONS OF LAW AND QUESTIONS OF FACT. 197 

§ 3S2. The sufficiency of the description to enable com- 
petent persons to apply the invention, is a question of fact 
for the jury, on the testimony of experts and the language 
itself. But it does not follow from this, that the construc- 
tion of the specification is to be drawn into the province of 
the jury. Their province is, after having been informed 
what the specification has said, to determine whether the 
directions are sufficiently clear and explicit to enable a com- 
petent workman to practise the invention. The information 
of what the specification has said, is to come from the 
court; although it may happen, that, in determining the 
meaning of the specification, the aid of the jury will be 
required to ascertain the meaning of words of art, or the 
surrounding circumstances which govern that meaning. 
When such words of art or such surrounding circumstances 
do affect the meaning, the court will instruct the jury that 
the specification has said so and so, according as they find 
the meaning of the scientific terms, or the existence of the 
surrounding circumstances. But if there are no words of 
art, and no surrounding circumstances, to be ascertained, 
the court, as we have seen, will instruct the jury what the 
specification has said; and then the jury will determine, the 
specification having said so and so, whether the description 
is sufficient to enable a competent workman to put the 
invention in practice. 

§ 383. There is no positive rule by which it can be deter- 
mined, in a given case, a 'priori, whether the meaning of 
words of art, or the bearing of surrounding circumstances, 
affects the sense of the specification; or which limits the 
right of the plaintiff' to offer evidence to show that its mean- 
ing is so affected. The plaintiff" is always entitled to say, 
that his specification requires the explanation of facts, to 
determine the extent of his claim and the character of his 
invention ; and the only course that can be taken is, for the 
court to receive and watch the evidence, and to apply it to 
17# 



198 LAW OF PATENTS. 

the construction, taking care that it he not allowed to go so 
far as to supply positive omissions, which would render the 
specification defective. Within this limit, the construction, 
which is nothing more than the ascertaining of the meaning 
of what is written, may always be affected by evidence ; 
which is to be taken into view, although no conflict arises, 
requiring a finding of the jury, because the court can have 
no judicial knowledge either of the terms of art or of the 
surrounding circumstances, and cannot say, until it has 
heard the evidence, that the meaning is not to be affected 
by them. 

^ 3S4. The provinces of the court and the jury, then, are 
distinct, and upon this particular question of the practicabil- 
ity of the specification, it is of consequence that they should 
not be confounded. When it is put to a jury to determine 
whether a specification has so fully and accurately described 
the invention that others can practise it from the descrip- 
tion, the danger sometimes arises, of their undertaking to 
determine what the claim is; because the extent and charac- 
ter of the claim itself may depend on the same words, on 
which they are to decide the intelligibility of the directions, 
and may thus seem to be inseparably blended with the ques- 
tion of that intelligibility. But in truth these questions are 
always separable, and care should be taken to separate 
them. In one aspect, everything is for the jury, which 
bears on the question, whether the specification sufficiently 
describes the mode of carrying the invention into effect; but, 
on the other hand, the meaning of the very passages on 
which this question arises, in relation to the prior question 
of what the specification has said, is for the court, after the 
facts which bear upon that meaning have been ascertained. 

§ 3S5. The question whether the invention disclosed by 
the specification is a proper subject for a patent, is a question 
of law, on which the court will instruct the jury. It may 



QtTESTIONS OF LAW AND QUESTIONS OF FACT. 199 

involve the finding of a variety of facts ; but when the facts 
are all ascertained, it is purely a question of law, whether 
the invention or discovery is a patentable subject. This is 
a distinct and very different question from that of the nov- 
elty of the invention. The thing claimed as the subject of 
a patent may be entirely new, and yet it may not fall within 
that class of discoveries or inventions recognized by the 
patent law as the subjects of patents, and as such compre- 
hended within the description of the statute. Thus, the 
subject-matter may turn out to be the application of an old 
or well-known thing to a new purpose, constituting a new 
use only so far as the occasion is concerned ; which the law 
decides is not the subject of a patent. Or, on the other 
hand, the claim may be for the use of a known thing in a 
known manner, to produce effects already known, but pro- 
ducing those effects so as to be more economically or bene- 
ficially enjoyed by the public ; which the law decides is a 
patentable subject. In these and other cases, where the 
question arises, upon all the facts attending and surrounding 
the alleged invention, whether it is a patentable subject, it is 
for the court to settle that question. Of course, the novelty 
of the invention is a pre-requisite to the validity of the 
patent, and this is a question of fact ; but the alleged inven- 
tion being ascertained to be new, it is still to be determined 
whether it is that species of invention to which the law 
gives the protection of a patent. 

§ 386. The question of infringement is, a« has already 
been stated, a question whether the invention of the defend- 
ant is substantially the same thing as that of the plaintiff. 
The identity of two things is a matter of fact, depending 
upon evidence ; and although it is to be determined under 
the guidance of those principles which determine what con- 
stitutes identity and diversity in the sense of the patent law, 
yet it is for the jury to determine, as matter of fact, under 
proper instructions, whether the two things are the same or 
different. 



CHAPTER VI. 

JURISDICTION OF CONGRESS AND THE FEDERAL COURTS. 

§ 387. The Constitution of the United States confers 
upon Congress power " to promote the progress of science 
and useful arts by securing for limited times to authors and 
inventors the exclusive right to their respective writings and 
discoveries." This power is general; there is no distinc- 
tion which limits it to cases where the invention has been 
knowa or used by the public. Accordingly, it is well 
settled, that Congress may pass general or special laws in 
favor of inventors ; and they may leave a particular inventor 
to the protection afforded by a general law, or they may 
specially exempt his case from the operation of a general 
law, by extending his exclusive right beyond the term fixed 
by such general law. This may be done after the invention 
has been in the possession of the public, as well as before ; 
for when the exclusive privilege has once been secured, the 
grant does not imply an irrevocable contract with the public, 
that, at the expiration of the period, the invention shall 
become public property. 

§ 388. Congress, therefore, has power to pass an act 
which will operate retrospectively to give a patent for an 
invention which is already in public use ; but no act, it has 
been said, ought to be construed to operate retrospectively, 
unless such a construction is unavoidable. 

§ 389. The Act of Congress of July 4, 1836, § 17, de- 
clares, "that all actions, suits, controversies, and cases, arising 
under any law of the United States, granting or confirming 
to inventors the exclusive right to their inventions or dis- 



JT7RISDICTI0N OF CONGRESS AND THE FEDERAL COURTS. 201 

coveries, shall be originally cognizable, as well in equity as 
at law, by the circuit courts of the United States, or any 
district court having the powers and jurisdiction of a circuit 
court, which courts shall have power, upon bill in equity 
filed by any party aggrieved, in any such case, to grant 
injunctions, according to the course and principles of courts 
of equity, to prevent the violation of the rights of any 
inventor as secured to him by any law of the United States, 
on such terms and conditions as said courts may deem 
reasonable : Provided, however, that, from all judgments 
and decrees, from any such court rendered in the premises, 
a writ of error or appeal, as the case may require, shall lie 
to the Supreme Court of the United States, in the same 
manner and under the same circumstances as is now pro- 
vided by law in other judgments and decrees of circuit 
courts, and in all other cases in which the court shall deem 
it reasonable to allow the same. 

^ 390. The jurisdiction of the circuit courts of the United 
States embraces, therefore, all cases, both at law and in 
equity, arising under the patent laws, without regard to the 
citizenship of the parties or the amount in controversy ; and 
it seems to be the better opinion, that this jurisdiction is 
exclusive, and that the state courts cannot entertain a suit 
for the infringement of a patent, or to declare a patent void. 

^ 391. When a case is sent to the Supreme Court of the 
United States, under the discretion conferred upon the court 
below by the seventeenth section of the Act of 1836, the 
whole case is to go up. The word " reasonable " in the 
statute applies to the " cases " rather than to the points of 
the cases. 



INPOEMATION 



PERSONS HAYINa BUSINESS TO TRANSACT 



UNITED STATES PATENT OFFICE. 



INFORMATION 

TO 

PERSONS HAYING BUSINESS TO TRANSACT 

AT THE 

UNITED STATES PATENT OFFICE. 



§ I. OF THE FORMS PEESCRIBED BY LAW, A^D THE 
RULES ADOPTED BY THE OFFICE. 

The following forms and rules are founded, the first upon 
positive law, and the second upon the constructive power 
the Commissioner has to issue such orders as will secure 
impartial justice to applicants, and facilitate the transaction 
of business. 

The laws now in force relative to patents, are those ap- 
proved July 4th, 1836, March 3, 1837, March 3, 1839, 
August 29, 1842, May 27, 1848, and xMarch 3, 1849. 

The forms resting upon these are fixed, and cannot, of 
course, be varied without the intervention of Congress ; but 
rules, having their origin in the Commissioner, can be revised 
or modified at his discretion. 

§ n, FOR WHAT PATENTS MAY BE GRANTED. 

By the act of 1836, section 6, patents were granted for 
any new and useful art, machine, manufacture, or compo- 
sition of matter, or any new and useful improvement on any 
art, machine, manufacture, or composition of matter, not 
known or used by others before the applicant's discovery or 
invention thereof, and not, at the time of his application for 
a patent, in public use, or on sale, with his consent or allow- 
ance, as the inventor or discoverer ; but, by the act of 3d 
18 



206 GUIDE TO THE PATENT OFFICE. 

March, 1839, no patent is held to be invalid by reason of 
the purchase, sale, or use [of the invention] prior to the 
application for a patent, except on proof of abandonment of 
such invention to the public, or that such purchase, sale, or 
public use, has been for more than two years prior to such 
application for a patent. 

By the 3d section of the act of 1S42, patents are also 
granted for new and original desig7is : 

1. For a manufacture, whether of metal or other materiah 

2. For the printing of woollen, silk, cotton, or other fabrics. 

3. For busts, statues, or bas reliefs, or composition in alto 
or basso relievo. 

4. For any impression or ornament, (whether complete in 
itself, or) to be placed on any article or manufacture in 
marble or other material. 

5. For any new and original pattern, or print, or picture, 
to be either worked into or worked on, or printed or painted, 
or cast or otherwise fixed on, any article of manufacture. 

6. For any new shape or configuration of any article of 
manufacture. 

All such designs not being previously known or used by 
others, 

§ ni. TO WHOM PATENTS MAY BE GRANTED. 

Patents are granted to citizens of the United States, to 
aliens who shall have been resident in the United States 
one year next preceding, and shall have made oath of their 
intention to become citizens thereof — to one or more as- 
signees of entire patent rights — to administrators and 
executors, and to foreign inventors or discoverers ; but the 
law makes no provision for granting to the latter patents for 
new and original designs. 

In case of the decease of an inventor, before he has ob- 
tained a patent for his invention, " the right of applying for 
and obtaining such patent shall devolve on the administrator 
or executor of such person, in trust for the heirs at law of 
the deceased, if he shall have died intestate : but if other- 



GUIDE TO THE PATENT OFFICE. 207- 

wise, then in trust for his devisees, in as full and ample 
manner, and under the same conditions, limitations, and 
restrictions, as the same was held, or might have been claimed 
or enjoyed, by such person in his or her lifetime ; and when 
application for a patent shall be made by such legal repre- 
sentatives, the oath or affirmation shall be so varied as to be 
applicable to them." 

Joint inventors are entitled to a joint patent, but neither 
can claim one separately. 

§ IV. OF APPLICATIONS FOR PATENTS. 

Of the propriety of making an application for a patent, 
the inventor or his agent must be the sole judge. The 
Patent Office is open ; the records and models may be con- 
sulted during office hours, and the applicant can personally, 
or by attorney, satisfy himself of the expediency of filing his 
papers. 

Further than the facilities thus afforded, the office can 
yield no assistance, until the case is regularly before it in 
manner prescribed by law. 

By the act of July 4, 1836, entitled " An act to promote 
the useful arts, and to repeal all acts and parts of acts here- 
tofore made for that purpose," a principle entirely new was 
engrafted upon the system under which patents had been 
previously granted. 

Under the provisions of this act, it was made the duty of 
the Commissioner of Patents, on the receipt of any applica- 
tion for a patent, to institute "an examination of the alleged 
new invention or discovery," with a view to determine 
whether the same had been before " invented or discovered 
by any other person in this country," or "patented or de- 
scribed in any printed publication, in this or any foreign 
country." Thus was the grant of patents in future restricted 
to such " inventions or discoveries " as were new in the most 
absolute sense of the term ; and a very laborious and respon- 
sible duty imposed upon this office. In aid of the solution 



208 GtriDE TO THE PATENT OFFICE. 

of the question of 7iovelty, thus raised on every application, 
the applicant was required to furnish a full and clear descrip- 
tion of his invention, signed, witnessed and verified by his 
oath, accompanied by a model and drawings of the same ; 
all being deemed necessary in order to illustrate his claim 
to a patent. Furnished with these illustrations, the ofhce 
was then required to go into a vigorous and extended exam- 
ination, taking in the whole range of history on the given 
subject, whether its evidences were to be found in patents 
granted, caveats filed, or descriptions published, in this or 
any foreign country, in any period of time. 

In the conduct of these examinations, it is necessary to 
keep in constant and laborious employment, a number of 
persons specially selected for their knowledge and skill in 
the arts ; to refer with guarded care to caveats filed in the 
secret archives of the office, and which can only come into 
view on such occasions ; to patents already granted, and to 
such works on the arts as have been published here or else- 
where ; and also to keep pace with the current of invention 
throughout the world, by a constant and copious supply of 
such publications in this country and in Europe as are 
devoted to this object. 

It will readily be seen that this office cannot undertake to 
respond to the numerous inquiries constantly addressed to 
it, whether such or such an invention is new, and whether 
a patent can be obtained for it; because every such inquiry 
involves the whx)le question of novelty ; and before the office 
could express, or even form, an opinion, the same range of 
rigorous examination now required by law on a regular 
application, would be necessary, and this, too, without illus- 
tration. Such inquiries are based on very imperfect general 
descriptions ; while, in applications for patents, the law 
requires that the office shall have the aid, not only of clear 
and full description, under oath, but also accurate drawings 
and models, before it shall decide the question whether, in 
any given case, the invention be new, &c. The attempt to 



GITIDE TO THE PATENT OFFICE. 209 

answer such interrogatories would effectually interrupt the 
business of the office, and be a direct infringement on the 
rights of those who apply for patents, as the examinations 
of their applications must necessarily be suspended ; more- 
over, it would be pre-judging cases, and be a violation of law. 

There is another class of inquiries, which, for the reasons 
above enumerated, cannot meet with a response from this 
office, viz., inquiries founded upon brief and imperfect 
descriptions, propounded with a view to ascertain to whom 
such alleged inventions were patented. 

The office is frequently called upon to explain certain 
principles of patent law, to give information as to modes of 
procedure in the protection of patents, and suits for infringe- 
ments, and also as to the value of a patented invention, and 
upon a variety of topics concerning the rights of patentees 
and others. The office cannot act as counsellor for indi- 
viduals, nor as an expounder of law, except in reference to 
questions arising within the office ; and the extent of infor- 
mation that can be given in these cases is to forward a copy 
of the patent laws and the usual printed official circular. 

It is hoped that this information will prove satisfactory. 
It will be distinctly understood that, in declining to respond 
to the class of inquiries above stated, this office acts under 
the necessity of the case, and not from any disposition to 
withhold information. 

In presenting an application for a patent, much disappoint- 
ment and delay will be avoided by attending to the following 
directions : 1st. The petition should be made to the Com- 
missioner, praying that a patent may be granted for the 
invention. 2d. The specification should be filed, describing, 
as clearly and concisely as possible, the improvement made. 
3d. The Oath or Affirmation should be made to the origi- 
nality of the invention. 4th. Drawings, when the nature 
of the case admits of them, should accompany the applica- 
tion. 5th. The Model or Specimeii, as the case may be, 
clearly representing the improvement, should be deposited ; 
18* 



210 GUIDE TO THE PATENT OFFICE. 

and, 6th, the Fee required by law should be paid, and in 
manrier pointed out in section XVIII. 

Owing to the great increase of business in this office, and 
in order to prevent all possibility of mistake as to the fact 
whether an application is complete, it has become necessary 
to put an end to the practice of receiving cases in detached 
portions at various times. It is now often the case that the 
fee is paid at one time, the papers forwarded at another, the 
drawing at a third, and the model delivered at still a dif- 
ferent period. Long intervals are often suffered to elapse 
between each stage of the procedure, and it is necessary at 
each step to search the books of the office to ascertain what 
the party has done before. 

In the multitude of applications, this state of things leads 
to the expenditure of much time, and, in case of similarity 
of names of parties, or of the character of inventions, is 
liable to be a cause of error. I have, therefore, deemed it 
necessary to adopt the following rule, which will be enforced 
on and after May 1st, 1850. 

All the papers and the fee in each application must be 
filed in this office at the same time, whether they be deliv- 
ered by the applicant or his agent, or forwarded by mail, 
and in those cases where the party or his agent is in this 
city, then the model must be delivered at the same time. 
If the party or his agent is not on the spot, the model can 
be forwarded at their convenience. 

This office cannot refuse to receive such papers and fees 
as may be forwarded to it at different intervals, but parties 
who persist in such a course are warned that this office will, 
hereafter, not acknowledge the receipt of the same, nor hold 
itself responsible for any errors that may arise from such 
irregular proceedings. 

Not until these requirements are faithfully and minutely 
fulfilled, according to the instructions hereafter given, can 
any case receive the action of the office. 

1st. Of the Petition. — The inventor, having made a useful 



GUIDE TO THE PATENT OFFICE. 211 

invention or discovery, must make application in writing to 
the Commissioner, signifying his desire of obtaining an 
exclusive property therein, and praying that a patent may 
be granted therefor. The usual form is annexed. The 
petition must be signed by the applicant. 

FORM OF PETITION. 
To the Commissioner of Patents : 
The Petition of John Fitch, of Philadelphia, id. the County of Phila^ 

delphia, and State of Pennsylyania, 
Respectfully represents : 

That your petitioner has invented a new and improTed mode of 
preventing steam-boilers from bursting, which he verily believes has 
not been known or used prior to the invention thereof by your peti- 
tioner. He, therefore, prays that letters-patent of the United States 
may be granted to him, therefor, vesting in him and his legal repre- 
sentatives the exclusive right to the same, upon the terms and con- 
ditions expressed in the act of Congress in that case made and provided: 
he having paid thirty dollars into the treasury, and complied with the 
other provisions of the said act. TOHN FTTCF 

2d. Of the Specijication . — He must then deliver a written 
description of his invention or discovery, and of the manner 
and process of making, constructing, using, and compound- 
ing the same, in such full, clear, and exact terms, avoiding 
unnecessary prolixity, as to enable any person skilled in the 
art or science to which it appertains, or with which it is 
most clearly connected, to make, construct, compound, and 
use the same ; and in case of any machine, he shall fully 
explain the principle and the several modes in which he has 
contemplated the application of that principle or character 
by which it may be distinguished from other inventions ; 
and shall particularly specify and point out the part, im- 
provement, or combination, which he claims as his own 
invention or discovery. 

It is important, in all cases, to have the specification 
describe the sections of the drawings, and refer by letters to 
the parts. The following is the form adopted by the office : 



212 GUIDE TO THE PATENT OFFICE. 

FOEM OF SPECIFICATION. 
To all whom it may concern : 

Be it known that I, John Fitch, of Philadelphia, in the Comity of 
Philadelphia, the State of Pennsylvania, have invented a new and 
improved mode of preventing steam-boilers from bursting, and I do 
hereby declare that the following is a full and exact description thereof 
— reference being had to the accompanying drawings and to the 
letters of reference marked thereon. 

The nature of my invention consists in providing the upper part of 
a steam-boiler with an aperture in addition to that for the safety-valve, 
which aperture is to be closed by a plug or disk of alloy, which will 
fuse at any given degree of heat, and permit the steam to escape, 
should the safety-valve fail to perform its functions. 

To enable others skilled in the art to make and use my invention, I 
■will proceed to describe its construction and operation : I construct 
my steam-boiler in any of the known forms, and apply thereto gauge- 
cocks, a safety-valve, and the other appendages of such boilers ; but, 
in order to obviate the danger arising from the adhesion of the safety- 
valve, and from other causes, I make a second opening in the top of 
the boiler, similar to that made for the safety-valve, as shown at A, 
in the accompanying drawing ; and in this opening I insert a plug or 
disk of fusible alloy, securing it in its place by a metal ring and 
screws, or otherwise. This fusible metal, I, in general, compose of a 
mixture of lead, tin, and bismuth, in such proportions as will insure 
its melting at a given temperature, which must be that to which it is 
intended to limit the steam ; and will, of course, vary with the pres- 
sure the boiler is intended to sustain. I surround the opening con- 
taining the fusible alloy by a tube, B, intended to conduct oif any 
steam which may be discharged therefrom. " When the temperature of 
the steam, in such a boUer, rises to its assigned limit, the fusible alloy 
will melt, and allow the steam to escape freely, thereby securing it 
from all danger of explosion. 

What I claim as my invention, and desire to secure by letters- 
patent, is the application to steam-boilers of a fusible alloy, which 
will melt at a given temperature, and allow the steam to escape, as 
herein described ; using for that purpose the aforesaid metallic com- 
pound, or any other substantially the same, and which will produce 
the intended effect. 

JOHN FITCH. 
Witnesses, 

Robert Fulton. ) 
OuvEE Etans. j 



GUIDE TO THE PATENT OFFICE. 213 

When the application is for a machine, the specification 
should commence thus : 

Be it known that I, , of , in the County of , 

and State of , have invented a new and useful machine for — 

[stating the use and title of the machine ; and if the application is for 
an improvement, it should read thus : a new and useful improvement 
on a, or on the, machine, &c.,] — and I do hereby declare that the 
following is a full, clear, and exact description of the construction and 
operation of the same : reference being had to the annexed drawings, 
making a part of this specification, in which figiure 1 is a perspective 
view, figure 2 a longitudinal elevation, figure 3 a transverse section, 
&c., [thus describing all the sections of the drawings, and then refer- 
ring to the parts by letters. Then follows the description of the 
construction and operation of the machine, and ending with the claim, 
which should express the nature and character of the invention, and 
identify the parts claimed separately or in combination. If the speci- 
fication is for an improvement, the original invention should be dis- 
claimed, and the claim confined to the improvement.] 

3d. Of the Oath or Ajffirviation. — " Every inventor, before 
he can receive a patent, must make oath or affirmation that 
he does verily believe that he is the original and first inventor 
or discoverer of the art, machine, manufacture, composition, 
or improvement, for which he solicits a patent ; and that he 
does not know or believe that the same was ever before 
known or used; and also of what country he is a citizen." 
In every case the oath or affidavit must be made before a 
person having general powers to administer oaths. Justices 
of the peace have not, in all cases, this general power. 

The oath required from applicants for patents may be 
taken, when the applicant is not, for the time being, residing 
in the United States, before any minister, plenipotentiary, 
charge d'affairs, consul, or commercial agent holding com- 
mission under the government of the United States, or 
before any notary public of the foreign country in which 
such applicant may be. 

If the applicant be an alien, and have resided one year in 
the United States next preceding the application, and have 



214 GUIDE TO THE PATENT OFFICE. 

given legal notice of his intention to become a citizen of the 
United States, he must make oath to these facts before he 
can apply for a patent for the same fee as that paid by a 
citizen. 

FOUM OF OATH. 

City and County of Philadelphia, ) 
State of Pennsylvania. 5 ^*' 

On this day of , 185 , before me the subscriber, 

a personally appeared the within named John Fitch, and made 

solemn oath [or affirmation] that he Terily believes himself to be the 
original and first inventor of the mode herein described for preventing 
steam-boilers from bursting ; and that he does not know or believe 
the same was ever before known or used ; and that he is a citizen of 
the United States. Signed, A. B. 

A foreigner should make oath of what country he is a 
citizen. An alien resident should make oath that he has 
resided in the United States one year next preceding his 
application for letters-patent, and has made oath of his 
intention to become a citizen thereof. 

4th. Of the Drawings. — The law requires that " the appli- 
cant for a patent shall accompany his application with draw- 
ings and written references, zvhen ike nature of the case 
admits of drawings.''^ These drawings should, in general, 
be in perspective, and neatly executed; and such parts as 
cannot be shown in perspective, must, if described, be repre- 
sented in plans, sections, or details. Duplicates of them 
are required, as one must accompany the patent, and one 
must be kept on file in the office. But an examination, as 
to originality of invention, may be made on a single drawing. 
Duplicates are only required in case the patent issues. 

They must be signed by the patentee, and attested by 
two witnesses, except when the specification describes the 
sections or figures, and refers to the parts by letters, in 
which case they are neither required to be signed nor 
accompanied by written references, the whole making one 
instrument. Drawings are absolutely necessary when the 



GUIDft TO THE PATENT OFFICE. 215 

case admits of them. They must be on separate sheets, 
distinct from the specification, and one at least must be 
made on stiff drawing paper. 

The Patent Office does not make original drawings to 
accompany applications for patent. It furnishes copies of 
the same only after the patent is completed. Draughtsmen 
in the city of Washington are always ready to make draw- 
ings at the expense of the patentees. 

5th. Of the Model or Specimen. — Every application must 
be accompanied by a model when the invention admits of 
one. It must be neatly and substantially made, of durable 
material, and if possible not over one cubic foot in contents. 
In case models are made of pine or other soft wood, they 
should be painted, stained, or varnished. The name of the 
inventor (and assignee, if assigned) must be printed or 
engraved upon, or fixed to it, in a durable manner. 

When the invention is of a " composition of matter," the 
law requires that the application be accompanied with speci- 
mens of the ingredients, and of the composition of matter, 
sufficient in quantity for the purpose of experiment. 

Models and specimens forwarded without a name cannot 
be entered on record, and are, therefore, liable to be lost or 



Models, if deposited with, any of the following agents, 
will be forwarded to the Patent Office, free of expense : 

The Collector of the port of Portsmouth, New Hampshire. 

The Collector of the port of Portland, Maine. 

The Collector of the port of Burlington, Vermont. 

The Collector of the port of Providence, Rhode Island. 

The Collector of the port of Boston, Massachusetts. 

The Collector of the port of Hartford, Connecticut. 

The Collector of the port of New York. 

The Collector of the port of Philadelphia, Pennsylvania. 

The Collector of the port of Baltimore, Jlaryland. 

The Collector of the port of Richmond, Virginia. 

The Collector of the port of Charleston, South Carolina-. 

The Collector of the port of Savannah, Georgia. 



216 GUIDE TO THE PATENT OFSlCfi. 

The Collector of the port of New Orleans, Louisiana. 

The Collector of the port of Detroit, Michigan. 

The Collector of the port of Buffalo, New York. 

The Surveyor at St. Louis, Missouri. 

The Collector of the port of Cleveland, Ohio. 

The Surveyor at Pittsburg, Pennsylvaxda. 

The Surveyor at Cincinnati, Ohio. 

The Surveyor at Louisville, Kentucky. 

Agents must send models received by them by packet, 
when the same are forwarded at the expense of the office. 

If applicants prefer to have their models transmitted by 
express, instead of by packet, they must, in all cases, pay 
the expense of transportation. Neither models nor speci- 
mens must, under any circumstances, be sent by mail, 
(See Sec. XX.) 

The transmission of models by the agents extends to 
those for new applications, as well as those restored in con- 
sequence of the destruction of the originals. 

Models of unpatented machines, specimens of composi- 
tions and of fabrics, and other manufactures, or works of 
art, will be received and arranged in the National Keposi- 
tory of the Patent Office. 

6th. Of fees payable for a Patent. — The fee payable on 
an application for a patent by a citizen of the United States,^ 
or by a foreigner who has resided in the United States one 
year next preceding the application, and has made oath of 
his intention to become a citizen, is thirty dollars : Bya 
subject of Great Britain, five hundred dollars: By any 
other foreigner, three hundred dollars. 

In a case of a total assignment, before the patent issues, 
of his invention, by a foreigner to a citizen of \hQ United 
States, the same fee is required as if the patent issued to 
the inventor himself. 

Instructions in regard to the manner of paying these fees 
may be found in Sec. XVIII, 

The above six pre-requisites having been complied with, 



GUIDE TO THE PATENT OFFICE. 217 

tbe application is ready for examination. But the neglect 
of any one of them, or of the instructions relative thereto, 
will be sufficient to delay the action of the office until they 
have been satisfactorily fulfilled. 

If the following questions can be ansv^^ered affirmatively, 
before transmitting the papers, few applications will be 
returned for correction : 

1st. Is the petition signed by the applicant and addressed 
to the Commissioner of Patents ? 

2d. Is the specification signed, and attested by two wit- 
nesses ; and does it contain a specific claim ? 

3d. Has the inventor made oath of his citizenship, and 
in accordance with instructions and forms given above ? 

4th. Are the drawings described and referred to in the 
specification? If not, are they signed before two subscrib- 
ing witnesses, and accompanied by written references ? Are 
duplicates sent ? 

5th. Has the model (or specimen) been deposited, and is 
the name of the inventor and assignee, if the invention be 
assigned, durably affixed thereto ? 

6th. Is the fee remitted, and in manner prescribed in 
Sec. XVIII. ? 

§ V. OF THE PROCEEDINGS DURING EXAMINATION. 

Applications are examined and patents issued in the order 
in which the proper documents are completed, except in 
cases in which the claims so nearly resemble those undergo- 
ing examination, as to render an interference probable ; in 
which case they will be taken up and examined with the 
cases then under examination. 

A^ decision deliberately made and affirmed by one Com- 
missioner, cannot be disturbed by his successor. Some 
years since the evils arising from such revisions became so 
apparent and embarrassing, that a positive rule to that effect 
was adopted. It was submitted to, and approved by, the 
President of the United States. 
19 



218 GUIDE TO THE PATENT OFFICE. 

This office, therefore, cannot, except under extraordinary 
circumstances, disturb decisions so reaffirmed, but must refer 
all who consider themselves aggrieved to their remedy by- 
appeal; for instructions with regard to which, or withdrawal, 
see Sec. VI., par. 3 and 4. For instructions relative to 
interfering applications, Sec. VI., par. 5. 

A defective specification or drawing may be amended at 
anytime before a patent has issued; in which case the 
applicant will be required to make oath anew. In case 
papers are withdrawn from the office for alteration or amend- 
ment before examination, the application will take its turn 
for examination as a 7iew case filed on the day of the recep- 
tion of the altered or amended papers. 

In case specifications and drawings should be found 
defective, they are returned to the applicant, with instruc- 
tions to amend. When returned to the office, they are 
again examined, the examination in such cases taking prece- 
dence of all new cases on hand at the time of their recep- 
tion. But if, on such examination, it should be found that 
the instructions to amend have been disregarded, or not 
properly attended to, the papers are again returned to the 
applicant, and, upon their second return to the office, the 
examination of such papers is delayed until all the business 
on hand at the tmie of their reception is disposed of. 

When papers are thus returned to applicants for amend- 
ment, should they find it necessary, or deem it important, 
to prepare new documents, in order to make suitable amend- 
ments, the original papers must be returned to the office 
together with the amendtd or new papers, otherwise examina- 
tion upon such cases will be delayed until the original 
papers are received by the office. 

After an application has been examined, no alteration 
made in the character of the invention can be considered 
under the same fee. Any such alteration requires a new 
fee, papers, &c., before examination can be had. 

In general, if any addition is to be made to an invention 



GTJIDE TO THE PATEKT OFFICE. 219 

duly before the office, or any change in its character, the 
applicant must withdraw and file his application anew. 

The personal attendance of an applicant at the Patent 
Office is unnecessary. The business can be done by cor- 
responding, or by attorney. All explanations and sugges- 
tions in relation to pending, and to all other cases, should be 
in writing, addressed to the Commissioner: correspondence 
with the Examiners or other subordinates is strictly prohib- 
ited.. 

When an application has been finally decided, the office 
will retain the original papers, allowing the applicant to 
obtain copies thereof. 

§ VI. OF THE EESULTS OF AN EXAMNATION. 

1st. If the claim or claims be allowed. — If a patent issues, 
it is transmitted to the inventor or his agent. If to the 
latter, he must have filed a full power of attorney, authoriz- 
ing him to receive it. In case an assignment be made of 
the entire patent right, the patent will be sent to the as- 
signee or his attorney. 

2d. If the claim he rejected. — In cases of rejection, such 
references are made in the official communication as, in the 
opinion of the office, justify its decision. If the applicant is 
satisfied with the grounds of rejection, he may withdrav/ his 
application ; if, on the contrary, he still deems himself enti- 
tled to a patent, he can request a reconsideration of the case, 
provided the references and arguments relied upon by the 
office as grounds of rejection have been carefully considered 
by him; and explanations, whether verbal or in writing, 
based upon the inapplicability of the one, or the unsound- 
ness of the other, may be received at any convenient time. 
These are the only grounds upon which an application can 
be reconsidered, and this final action in the case cannot be 
had until it comes up in its turn as a case presented anew. 
If the applicant is still dissatisfied, he can appeal from the 
decision of the Commissioner, as prescribed by law. 



220 GUIDE TO THE PATENT OFFICE. 

3d. Of the withdrawal. — When either an American or 
foreign application is rejected, and the applicant relin- 
quishes his claim, and desires to avail himself of the provis- 
ions of the 7th section of the act of 1836, and the 12th 
section of the act of 1837, he must petition the Commis- 
sioner of Patents, stating the abandonment of his applica- 
tion, in vvrhich case two thirds of the original fee will be 
returned. The model and papers are retained by the office, 
and if the latter have been withdrawn for correction, or for 
any other purpose, they must be returned to their files before 
a withdrawal of two thirds of the fee can be allowed. No 
money is, however, refunded on the withdrawal of an appli- 
cation, after an appeal has been taken from the decision 
of the Commissioner : nor any part of the fees received on 
filing caveats, or applications for additional improvements, or 
for reissues, or for extensions, or for designs. 

In withdrawing an application the following forms may 
be followed : 

To the Commissioner of Patents: 

Sir : I hereby withdraw my application for a patent for improve- 
ments in the cotton-gin, now in your office, and request that twenty 
dollars may be returned to me agreeably to the provision of the act of 
Congress authorizing such withdrawal. 

ELI WHITNEY. 

Cabotville, Mass., July 16, 1849. 

Received of the Treasurer of the United States, per Thomas Ewbank, 
Commissioner of Patents, twenty dollars, being the amount refunded 
on withdrawing my application for a patent for improvements in the 
cotton-gin. 

ELI WHITNEY. 
Cabotville, Mass., July 16, 1849. 

As the law does not allow public moneys to be paid in 
bank bills or by draft on banks, particular instructions should 



GtriDE TO THE PATENT OFFICE. 221 

be cfiven by the person withdrawing as to the manner in 
which the money shall be paid, i. e., whether to his order at 
this office, or remitted by mail, m gold at his risk. Money 
in gold and silver only is receivable and payable at this 
office. 

4th. Of appeal. — When a patent is refused by the Com- 
missioner, the applicant can have remedy by an " appeal to 
the Chief Justice of the District Court of the United States 
for the District of Columbia," by giving notice thereof to the 
Commissioner, and filing in the Patent Office, within such 
time as the Commissioner shall appoint, his reasons of 
appeal, specially set forth in writing, and also paying into 
the Patent Office, to the credit of the patent fund, the suin 
of twenty-five dollars, in manner prescribed in Sec. XVIII. 

" And it shall be the duty of said Chief Justice, on peti- 
tion, to hear and determine all such appeals, and to revise 
such decisions in a summary way, on the evidence produced 
before the Commissioner, at such early and convenient time 
as he may appoint, first notifying the Commissioner of the 
time and place of hearing, whose duty it shall be to give 
notice thereof to all parties who appear to be interested 
therein, in such manner as said Judge shall prescribe. 
The Commissioner shall also lay before the said Judge all 
the original papers and evidence in the case, together with 
the grounds of his decision, fully set forth in writing, 
touching all the points involved by the reasons of appeal, to 
which the revision shall be confined. And at the request 
of any party interested, or at the desire of the Judge, the 
Commissioner, and the Examiners in the Patent Office, 
may be examined, under oath, in explanation of the princi- 
ples of the machine, or other thing, for which a patent in 
such case is prayed [for]. And it shall be the duty of said 
Judge, after a hearing of any such case, to return all the 
papers to the Commissioner, with a certificate of his pro- 
ceedings and decision, which shall be entered of record in 
the Patent Office ; and such decision, so certified, shall 
19* 



822 GUIDE TO THE PATENT OFFICE. 

govern the further proceedings of the Commissioner in such 
case ; Provided, however, That no opinion or decision of the 
Judge in any such case shall preclude any person interested 
in favor [of] or against the validity of any patent which 
has been or may hereafter be granted, from the right to 
contest the same in any judicial court, in any action in 
which its validity may come in question." 

In cases of appeal it has been decided by the said Chief 
Justice that the case must be dismissed, unless the "reasons 
of appeal " are filed in the Patent Office vi^ithin the time 
prescribed by the Commissioner, and that no further reasons 
or argument in writing, or otherwise, and no answer to the 
grounds of the Commissioner's decision can be received, 
heard or considered, afterwards ; but that the appeal must 
be decided upon the papers filed in the Patent Office, and 
the written grounds of the Commissioner's decision. 
Notice of this decision is given because a practice somewhat 
different has heretofore prevailed. 

In cases where patents are refused for any reasons what- 
ever, either by the Commissioner of Patents, or by the 
Chief Justice of the United States Court for the District of 
Columbia, remedy can be had by bill in equity; "and the 
court having cognizance thereof, on notice to adverse par- 
ties," (and when there shall be no adverse party, a copy of 
the bill shall be served upon the Commissioner of Patents, 
when the whole of the expenses of the proceedings shall be 
paid by the applicant, whether the final decision shall be in 
his favor or otherwise,) " and other due proceedings had, 
may adjudge and declare either the patent void in the 
whole or in part, or inoperative and invalid in any particu- 
lar part or portion of the United States, according to the 
interest which the parties to such suit may possess in the 
patent or the inventions patented; and may also adjudge 
that such applicant is entitled, according to the principles 
and provisions of this act, to have and receive a patent for 
his invention, as specified in his claim, or for any part 



GUIDE TO THE PATENT OFFICE, 223 

thereof, as the fact of priority of right or invention shall, in 
any such case, be made to appear. And such adjudication, 
if it be in favor of the right of such applicant, shall 
authorize the Commissioner to issue such patent, on his 
filing a copy of the adjudication, and otherwise complying 
with the requisitions of this act : Provided, however, That 
no such judgment or adjudication shall affect the rights of 
any person, except the parties to the action, and those 
deriving title from or under them, subsequent to the rendi- 
tion of such judgment." 

It has recently been decided in the District Court of East- 
ern Pennsylvania, that all proceedings in equity against the 
Commissioner of Patents must be commenced and prose- 
cuted in the courts of the District of Columbia; no court 
out of the District having jurisdiction over the subject- 
matter. 

Before appealing from the decision of the Commissioner, 
the oath of invention must be renewed. 

5th. Of Interfering Applications. — Whenever an appli- 
cation is presented for a patent, which, in the opinion of 
the Commissioner, would interfere with any other patent 
for which an application may be pending, or with any unex- 
pired patent which shall have been granted, it shall be the 
duty of the Commissioner to give notice thereof to such 
applicants, or patentees, as the case may be ; and if either 
shall be dissatisfied with the decision of the Commissioner 
on the question of priority of right or invention, on a hear- 
ing thereof he may appeal from such decision on like terms 
and conditions as are provided in the case of applications 
for inventions not new; and the like proceedings shall be 
had to determine which, or w^hether either, of the applicants 
is entitled to receive a patent as prayed for. 

In contested cases, the following rules have been estab- 
lished for taking and transmitting evidence : 

1st. That all statements, declarations, evidence, &c., 
shall be in writing, setting forth, minutely and particularly, 



224 GUIDE TO THE PATENT OFFICE. 

the point or points at issue, and shall be verified by oath or 
affirmation. 

2d. That all statements, declarations, proofs, and evi- 
dence, shall be filed in the Patent Office by the parties, 
respectively, before the day of hearing. 

3d. That before the deposition of a witness or witnesses 
be taken by either party, notice should be given to the 
opposite party of the time and place when and where such 
deposition or depositions will be taken ; so that the oppo- 
site party, either in person or by attorney, shall have full 
opportunity to cross-examine the witness or witnesses. And 
such notice shall, with proof of service of the same, be 
attached to the deposition or depositions, whether the party 
cross-examine or not ; and such notice shall be given in 
sufficient time for the appearance of the opposite party, and 
for the transmission of the evidence to the Patent Office 
before the day of hearing. 

4th. That all evidence, &c., shall be sealed and addressed 
to the Commissioner of Patents, by the persons before 
whom it shall be taken, and so certified thereon. 

5th. That the certificate of the magistrate, taking the 
evidence shall be substantially in the following form, and 
written upon the envelope, viz. : 

" I hereby certify that the depositions of A B, C D, &c., relating 
to the matter of interference between E F and G H, were taken, 
sealed up, and addressed to the Commissioner of Patents by me. 

A B, Justice of the Peace." 

6th. In cases of extension, where no opposition is made, 
ex parte testimony Avill be received from the applicant; and 
such testimony as may have been taken by the applicant, 
prior to notice of opposition, shall be received : Provided, 
The applicant shall give prompt notice to the opposing 
party or parties of the names and residences of the wit- 
nesses whose testimony has been thus taken. 

7th. That no evidence, statement, or declaration, touch- 



GtriDE TO THE PATENT OFFICE, 225 

ing the matter at issue, will be considered upon the said 
day of hearing, which shall not have been taken and filed 
in compliance with these rules: Provided, T^hd^i if either 
party shall be unable, for good and sufficient reasons, to pro- 
cure the testimony of a witness or witnesses, within the 
stipulated time, then it shall be the duty of said party to 
give notice of the same to the Commissioner of Patents, 
accompanied by statements under oath of the cause of such 
inability — and of the steps which have been taken to pro- 
cure said testimony ; 'and of the time or times when efforts 
have been made to procure it; which last mentioned notice 
to the Commissioner shall be received by him previous to 
the day of hearing aforesaid. 

§ Vn. OF ADDITIONAL IMPROVEMENTS. 

"Whenever the original patentee shall be desirous of 
adding the description and specification of any new im- 
provement of the original invention or discovery, which 
shall have been invented or discovered by him subsequent 
to the date of his patent, he may, like proceedings being 
had in all respects as in the case of original applications, 
and on the payment of fifteen dollars, as hereinafter men- 
tioned, have the same annexed to the original description 
and specification ; and the Commissioner shall certify on 
the margin of such annexed description and specification, 
the time of its being annexed and recorded; and the same 
shall thereafter have the same effect in law, to all intents 
and purposes, as though it had been embraced in the orig- 
inal description and specification. 

In all such cases the claim in the original patent is sub- 
ject to a reexamination : and if it shall appear that any 
part of the claim was not original at the time of granting 
the patent, a disclaimer of said part must be filed in the 
Patent Office, or the specification of claims restricted, by 
having the patent reissued before the improvement can be 
added. If the improvement cannot be added, it may, if 



226 GUIDE TO THE PATENT OFFICE. 

patentable, be secured by a separate patent, on the pay- 
ment of the fee of thirty dollars. If the patent was granted 
before the 15th of December, 1836, a model and draw- 
ings of the invention, as first patented, verified by oath, 
must be furnished, unless dispensed with by the Commis- 
sioner. 

FORM FOR ADDITION OF NEW IMPROVEMENTS. 

To the Commissioner of Patents : 
Tlie petition of James Rumsey, of the county of Berkely, and State 

of Virginia, 
Respectfully represents : 

That youi' petitioner did obtain letters-patent of the United States 
for an improvement in the boilers of steam-engines, which letters- 
patent are dated on the first day of March, 1835; that he has, since 
that date, made certain improvements on his said invention ; and that 
he is desirous of adding the subjoined description of his said improve- 
ments to his original letters-patent, agreeably to the provisions of the 
act of Congress in that case made and provided, he having paid fif- 
teen dollars into the Treasury of the United States, and otherwise 
complied with the requirements cf the said act. 

JAMES KUMSEY. 

§ VIII. OF DISCLAIMERS. 

The 7th section of the law of 3d March, 1837, provides 
as follows : 

" That whenever any patentee shall have, through inad- 
vertence, accident, or mistake, made his specification of 
claim too broad, claiming more than that of which he was 
the original or first inventor, some material and substan- 
tial part of the thing patented being truly and justly his 
own, any such patentee, his administrators, executors, and 
assigns, whether of the whole or of a sectional interest 
therein, may make disclaimer of such parts of the thing 
patented as the disclaimant shall not claim to hold by virtue 
of the patent or assignment, stating therein the extent of 
his interest in such patent; which disclaimer shall be in 



GUIDE TO THE PATENT OFFICE. 227 

writing, attested by one or more witnesses, and recorded in 
the Patent Office, on payment by the person disclaiming, in 
manner as other patent duties are required by law to be 
paid, of the sum of ten dollars. And such disclaimer shall 
thereafter be taken and considered as part of the original 
specification, to the extent of the interest which shall be 
possessed in the patent or right secured thereby, by the dis- 
claimant, and by those claiming by or under him, subse- 
quent to the record thereof. But no such disclaimer shall 
affect any action pending at the time of its being filed, 
except so far as it may relate to the question of unreasona- 
ble neglect or delay in filing the same." 

In case of patents granted before the 15th December, 
1836, no disclaimer will be admitted for record until a 
model and drawings of the invention, as originally patented, 
verified by oath, shall have been deposited, unless dispensed 
with by the Commissioner. 

FORM OF DISCLAIMER. 
To the Commissioner of Patents : 
The petition of Eliphalet Nott, of Schenectady, in the county of 
Schenectady, and State of New York, 

Respectfully represents : 

That he has by assignment, duly recorded in the Patent Office, 
become the owner of a right for the several States of Massachusetts, 
Connecticut and Ehode Island, to certain improvements in the steam- 
engine, for which letters-patent of the United States were granted to 
Jacob Perkins, of Boston, in the State of Massachusetts, dated on the 
first day of March, 1835. That he has reason to believe that, 
through inadvertence and mistake, the claim made in the specification 
of said letters-patent is too broad, including that of which the said 
patentee was not the first inventor. Your petitioner, therefore, 
hereby enters his disclaimer to that part of the claim in the afore- 
named specification which is in the following words, to wit : "I also 
claim the particular manner in which the piston of the above 
described engine is constructed, so as to insure the close fitting of the 
packing thereof to the cylinder, as set forth ;" which disclaimer is to 
operate to the extent of the interest in said letters-patent vested m 



228 GUIDE TO THE PATENT OFFICE. 

your petitioner, wlio has paid ten dollars into the Treasury of the 
United States, agreeably to the requirements of the act of Congress 
in that case made and pro-vided. 

ELIPHALET NOTT. 
Witness, John Peince. 

When the disclaimer is made by the original patentee, it 
must, of course, be so worded as to express that fact. 

§ IX. OF RE-ISSUES. 

When an applicant wishes to cancel an old patent, and to 
correct a mistake or error which has arisen from inadvert- 
ence, he should state this fact in his application, and express- 
ly surrender the old patent, which must be transmitted to the 
Patent Office before a new patent will be issued. And no 
improvement or alteration, made subsequently to the filing of 
the application upon which the original patent was granted, 
can be introduced into a patent upon reissue. Section 
13, of the act of July, 1836, enacts : " That whenever any 
patent, which has heretofore been granted, or which shall 
hereafter be granted, shall be inoperative or invalid, by rea- 
son of a defective or insufficient description or specification, 
or by reason of the patentee claiming, in his specification, 
as his own invention, more than he had. or shall have a 
right to claim as new, if the error has or shall have arisen 
by inadvertence, accident or mistake, and without any 
fraudulent or deceptive intention, it shall be lawful for the 
Commissioner, upon the surrender to him of such patent, 
and the payment of the further duty of fifteen dollars, to 
cause a new patent to be issued to the said inventor for the 
same invention for the residue of the period, then unexpired, 
for which the original patent was granted, in accordance 
with the patentee's corrected description and specification." 

In a reissue the claim is subject to reexamination, and 
if it shall appear that any part was not original, at the time 
of granting the patent, the reissue will not be granted, 
unless said part be omitted, or a disclaimer filed in the 



GtJIDE TO THE PATENT OFFICE. 229 

Patent Office. If nothing can be claimed, the reissue can- 
not be granted, nor the surrendered patent returned. Where 
the patent was granted before the 15th of December, 1836, 
a model and drawings of the invention, as originally pa- 
tented, verified by oath, must be deposited in the Patent 
Office before a reissue can be granted, unless dispensed 
with by the Commissioner: and when the original patent 
has been lost, before a reissue can be granted, the original 
patent should first be restored, and then surrendered. 

In case of the death of an inventor, or of any assignment 
of the original patent made by him, a similar right vests in 
his executors, administrators, or assignees ; and the patent so 
reissued, together with the corrected description and speci- 
fication, have the same effect and operation in law on the 
trial of all actions thereafter commenced for causes subse- 
quently accruing, as though the same had been originally 
filed in such corrected form before the issuing of the original 
patent. 

On a surrender, several patents may be issued for distinct 
and separate parts of the invention, upon the payment of 
thirty dollars for each. 

FORM OF SURRENDER OF A PATENT FOR RE-ISSUE. 

To the Commissioner of Patents : 

The petition of Samuel Morey, of Philadelphia, in the county of Phila- 
delphia, and State of Pennsylvania, 

Respectfully represents : 

That he did obtain letters-patent of the United States for an improve- 
ment in the boilers of steam engines, which letters-patent are dated on 
the first day of March, 1835. That he now believes that the same is 
inoperative and invalid, by reason of a defective specification, which 
defect has arisen from inadvertence and mistake. He therefore prays 
that he may be allowed to surrender, and he hereby does surrender, the 
same, and request that new letters-patent may issue to him for the same 
invention, for the residue of the period for which the original patent 
■was granted, under the amended specification herewith presented ; he 
20 



230 GUIDE TO THE PATENT OFFICE. 

having paid fifteen dollars into the Treasury of the United States, 
agreeably to the requirements of the act of Congress in that case made 
and provided. 

SAMUEL MORET. 

§ X. OF EXTENSIONS. 

Section eighteen of the act of 1836 enacts, " That when- 
ever any patentee of an invention or discovery shall desire 
an extension of his patent beyond the term of its limitation, 
he may make application therefor, in writing, to the Com- 
missioner of the Patent Office, setting forth the grounds 
therefor; and the Commissioner shall, on the applicant's 
payincf the sum of forty dollars to the credit of the Treasury, 
as in the case of the original application for a patent, cause 
to be published in one or more of the principal newspapers 
in the city of Washington, and in such other paper or papers 
as he may deem proper, published in the section of the 
country most interested adversely to the extension of the 
patent, a notice of such application, and of the time and 
place when and where the same will be considered, that any 
person may appear and show cause why the extension should 
not be granted." The patentee shall furnish a statement 
in writing, under oath, of the ascertained value of the inven- 
tion, and of his receipts and expenditures, sufficiently in 
detail to exhibit a true and faithful account of loss and profit 
in any manner accruing to him from and by reason of said 
invention. And if, upon a hearing of the matter, it shall 
appear to the full and entire satisfaction of the Commis- 
sioner, having due regard to the public interest therein, that 
it is just and proper that the term of a patent should be 
extended, by reason of the patentee, without neglect or fault 
on his part, having failed to obtain, from the use and sale 
of his invention, a reasonable remuneration for the time, 
ingenuity, and expense bestowed upon the same, and the 
introduction thereof into use, it shall be the duty of the 
Commissioner to renew and extend the patent, by making a 
certificate thereon of such extension, for the term of seven 



GUIDE TO THE PATENT OFFICE. 231 

years from and after the expiration of the first term ; whir.h 
certificate shall be entered on record in the Patent Office ; 
and thereupon the said patent shall have the same effect in 
law as though it had been originally granted for the term 
of twenty-one years ; and the benefit of such extension shall 
accrue to assignees and grantees of the right to use the 
thing patented to the extent of their respective interests 
therein : Provided, however, that no extension of a patent 
shall be granted, after the expiration of the term for which 
,. it was originally issued. 

By the first section of the act of May 27, 1848, it is pro- 
vided " that the power to extend patents, now vested in the 
board composed of the Secretary of State, Commissioner 
of Patents, and Solicitor of the Treasury, by the eighteenth 
section of the act approved July fourth, eighteen hundred 
and thirty-six, respecting the Patent Office, shall hereafter 
be vested solely in the Commissioner of Patents; and when 
an application is made to him for the extension of a patent, 
according to said eighteenth section, and sixty days' notice 
given thereof, he shall refer the case to the principal examiner 
having charge of the class of inventions to which said case 
belongs, who shall make a full report to said Commissioner 
of the said case, and particularly whether the invention or 
improvement secured in the patent was new and patentable 
when patented ; and thereupon the said Commissioner shall 
grant or refuse the extension of said patent upon the same 
principles and rules that have governed said board; but no 
patent shall be extended for a longer term than seven 
years." 

The following suggestions and rules have been adopted 
for the benefit of those persons who may hereafter apply for 
extensions. 

The questions which arise on each application for an 
extension are : 

1, Is the invention TioueZ .? 

2. Is it meful ? 



232 GUIDE TO THE PATENT OFFICE. 

3. Is it valuahle and important to the public ? 

4. Has the inventor been adequately remunerated for his 
time and expenses in originating and perfecting it ? 

5. Has he used due diligence in introducing his inven- 
tion into general use ? 

To enable the Commissioner to come to a correct con- 
clusion in regard to the third point of inquiry, the applicant 
should procure the testimony of persons not interested in 
the invention, which testimony should be taken under oath. 

In regard to the fourth and fifth points of inquiry, in 
addition to his own oath showing his receipts and expendi- 
tures on account of the invention, by which his profit or loss 
is to be ascertained, the applicant should show, by the testi- 
mony of disinterested witnesses on oath, that he has taken 
all reasonable measures to introduce his invention into gen- 
eral use, and that, without default or neglect on his part, he 
has failed to obtain from the use and sale of the invention a 
reasonable remuneration for the time, ingenuity, and expense 
bestowed on the same, and the introduction thereof into 
use. 

The law now requiring that a notice of sixty days shall 
be given of each application for extension, it will be neces- 
sary for the applicant to file his petition, and pay the requi- 
site fee, at least three months before his patent expires. 

Persons opposing the extension of a patent, must file in 
the Patent Office their reasons, specifically set forth in writ- 
ing, twenty days before the day of hearing. 

In case of opposition by any person to the extension of a 
patent, both parties may take testimony, each giving reason- 
able notice to the other of the time and place of taking said 
testimony, which shall be taken according to the rules pre- 
scribed by the Commissioner of Patents in case of interfer- 
ence. 

All arguments submitted to the Commissioner must be in 
writing. 

The report of the examiner, now required by law to be 



GtJIDE TO THE PATENT OFFICE. 233 

made to the undersigned, will, if practicable, be ready fifteen 
days before the day appointed for the hearing. And, in 
order that the examiner may have ample time to make his 
report, the patent, together with all the testimony and 
arguments, should be filed in the office at least twenty days 
before the day of hearing. 

If the applicant fails to furnish the undersigned with a 
statement, in detail, of his receipts and expenditures, as 
required by the ISth section of the act approved July 4, 
1836, his application must be rejected. His attention, there- 
fore, is particularly called to this point, as many fail to 
accompany their petitions with any statement of receipts 
and expenditures. 

If a patent has expired before application for extension is 
made, or if such application is made nnthin the sixty days' 
notice now required by law, the office can afford the inven- 
tor no relief. If he desires a renewal of his patent, his 
remedy is to be found only in a special act of Congress. 

§ XL OF DESIGNS. 

The 3d section of the act of 1842, without repealing or 
changing the law under which patents have heretofore been 
granted, enacts : " That any citizen or citizens, or alien or 
aliens, having resided one year in the United States, and 
taken the oath of his or their intention to become a citizen 
or citizens, who by his, her, or their own industry, genius, 
efforts, and expense, may have invented or produced any 
new and original design for a manufacture, whether of 
metal or other material or materials, or any new and origi- 
nal design for the printing of woollen, silk, cotton, or other 
fabrics,, or any new and original design for a bust, statue, or 
bas relief, or composition in alto and basso relievo, or any 
new and original impression or ornament, or to be placed on 
any article of manufacture, the same being formed in marble 
or other materia], or any new and useful pattern, or print, or 
picture, to be either worked into, or worked on, or printed, 
20=^ 



234 GUIDE TO THE PATENT OFFICE. 

or painted, or cast, or otherwise fixed on any article of 
manufacture, or any new and original shape or configuration 
of any article of manufacture not known or used by others 
before his, her, or their invention or production thereof, and 
prior to the time of his, her, or their application for a patent 
therefor, and who shall desire to obtain an exclusive property 
or right therein, to make, use, and sell, and vend the same, 
or copies of the same, to others, by them to be made, used, 
and sold, may make application in writing to the Commis- 
sioner of Patents, expressing such desire, and the Commis- 
sioner, on due proceedings had, may grant a patent therefor, 
as in the case now of application for a patent : Provided, 
that the fee in such cases, which by the now existing laws 
would be required of the particular applicant, shall be one- 
half the sum, (i. e., fifteen dollars,) and that the duration of 
said patent shall be seven years; and that all the regulations 
and provisions which now apply to the obtaining or protec- 
tion of patents, not inconsistent with the provisions of this 
act, shall apply to applications under this section." 

It will be perceived, from the above, that the law extends 
protection to a new class of objects, and that this is merely 
additio7ial to previous acts. 

In making an application to secure a design, the same 
course of proceedings is required as in applying for an inven- 
tion. The petition, specification, and oath, executed as pre- 
scribed below, must be filed, and the specimen and duplicate 
drawings deposited. In case of rejection, no part of the fee 
for designs is refunded. 

FORM OF APPLICATION FOR PATENTS FOE DESIGNS. 

! To the Commissioner of Patents : 

The petition of Benjamin West, of the city and county of Philadelphia, 
and State of Pennsylvania, 

Bespectfully represents : 

That your petitioner has invented or produced [a new and original 
design for a composition in alto relievo] which he verily helievea has 



GUIDE TO THE PATENT OFFICE. 235 

not been known prior to the production thereof by your petitioner. 
He therefore prays that letters-patent of the United States may be 
granted to him therefor, Testing in him and his legal representatives 
the exclusive right to the same, upon the terms and conditions ex- 
pressed in the act of Congress in that case made and provided ; he 
having paid fifteen dollars into the Treasury, and complied with the 
other provisions of the said act. 

BENJAMIN WEST. 



FOKM OF SPECIFICATION. 
To all whom it may concern : 

Be it known, that I, Benjamin West, of the city of Philadelphia, in 
the county of Philadelphia, and State of Pennsylvania, have invented 
or produced a new and original design for a composition in alto 
relievo, and I do hereby declare that the following is a full and exact 
description of the same. [Here follows a description of the design with 
reference to the specimen or drawing, the specification to conclude 
with declaring what the inventor claims, in terms characteristic of the 
design, &c.] BENJAMN WEST. 

Witnesses, 

Noah Webster, ) 

Natilikiel Bowditch. 3 

FORM OF OATH. 

City and County of Philadelphia, ) 
State of Pennsylvania, ) 

On this day of , 185 , before the subscriber, a , 

personally appeared the within named Benjamin West, and made 
solemn oath [or affirmation, as the case may be] that he verily believes 
himself to be the original and first inventor or producer of the design 
for a composition in alto relievo, and that he does not know or believe 
that the same was ever before known or used, and that he is a citizen 
of the United States. Signed, B. A. 

§ Xn. OF FOREIGN PATENTS. 
A patent may be taken out by the inventor in a foreign 
country without aifecting his right to a patent in the United 
States, provided the invention has not been introduced into 
public and common use in the United States prior to the 
application. In every such case the patent is limited to 



236i' GUIDE TO THE PATENT OFFICE. 

fourteen years from the date of the foreign letters-patent. 
The introducer, as such, of a new invention from a foreign 
country, is not entitled to letters-patent. If an alien neglects 
to put and continue on public sale the invention in the 
United States, on reasonable terms, for eighteen months, he 
loses all benefit of the patent. 

Applications for inventions patented in a foreign country 
will be taken up for examination immediately after all the 
necessary papers and drawings have been filed, the fee paid, 
and the model deposited. As the letters-patent issued in 
this country for inventions patented abroad bear date with 
the foreign letters-patent, this rule has been adopted with 
the view of giving the longest term to the patent in this 
country. No invention will be considered as patented in a 
foreign country, unless the specification has been enrolled, 
and the patent in all respects complete. 

For a similar reason, applications for the surrender and 
reissue of letters-patent, and for additional improvements to 
be added to original letters-patent, will be examined imme- 
diately after they shall have been completed. 

§XIII. OF CAVEATS. 

The 12th section of the act of 1836 provides : "That any 
citizen of the United States, or alien who shall have been a 
resident of the United States one year, next preceding, and 
shall have made oath of his intention to become a citizen 
thereof, who shall have invented any new art, machine, or 
improvement thereof, who shall desire further time to mature 
the same, may, on paying to the credit of the Treasury the 
sum of twenty dollars, file in the Patent OfRce a caveat, 
setting forth the design and purpose thereof, and its principal 
and distinguishing characteristics, and praying protection of 
his rights, till he shall have matured his invention ; which 
sum of twenty dollars, in case the person filing such caveat 
shall afterwards take out a patent for the invention therein, 
mentioned, shall be considered a part of the sum herein re- 



GtriDE TO THE PATENT OFFICE. 237 

quired for the same. And such caveat shall be filed in the 
confidential archives of the office, and preserved in secrecy. 
And if application shall be made by any other person, within, 
one year from the time of filing such caveat, for a patent of 
any invention, with which it may in any respect interfere, 
it shall be the duty of the Commissioner to deposit the 
description, specifications, drawings, and model, in the con- 
fidential archives of the office, and to give notice (by mail) 
to the person filing the caveat of such application, who shall 
within three months after receiving the notice, if he would 
avail himself of the benefit of his caveat, file his description, 
specifications, drawings, and models ; and if, in the opinioa 
of the Commissioner, the specifications of claim interfere 
with each other, like proceedings may be had in all respects 
as are in this act provided in the case of interfering appli- 
cations." 

" Whenever the applicant shall request it, the patent shall 
take date from the time of filing the specifications and draw- 
ings, not, however, exceeding six months prior to the actual 
issuing of the patent ; and, on like request, and the payment 
of the duty herein required, by any applicant, his specifica- 
tion and drawings shall be filed in the secret archives of the 
office, until he shall furnish the model, and the patent be 
issued, not exceeding the term of one year; the applicant 
being entitled to notice of interfering applications." 

Caveats may be renewed yearly by payment of a new fee 
of S20; but the protection afforded by a caveat is against 
only such applications as are filed within the year from the 
time of filing the caveat. 

A full description of the invention is required, to enable 
the Commissioner of Patents to judge of interferences. 

The law makes no provision for the filing of caveats by 
foreigners. 

For the information of caveators, the following rules have 
been adopted : 

1. Caveat papers cannot, under any circumstances, be 



ada GUIDE TO THE PATENT OFFICE. 

withdrawn from the office, nor undergo any alteration, after 
they have been once filed. 

2. Additional papers relating to the invention may he 
admitted under the same file, the date of reception of such 
papers being noted. 

3. In case of filing papers additional to an original caveat, 
the right to notice of such papers expires with the caveat ; 
and any additional papers, not relating to the invention as 
first caveated, are not entitled to notice. 

4. Caveat papers once filed cannot be inspected by the 
caveator, except in presence of a sworn officer, nor by any 
other persons than those duly authorized by law to examine 
such papers. 

5. The caveator, or other person properly authorized by 
him, may at any time obtain copies of the caveat papers at 
the usual rates. 

6. It is desirable that caveats should be explicit as to the 
character and features of the invention — embrace suitable 
drawings or sketches, and a model if convenient. The 
caveat fails of its purpose when the invention is not suf- 
ficiently explained. 

FORM OF CAVEAT. 
To the Commissioner of Patents : 

The petition of Amos Whittemore, of 4;he city and county of New 

York, aM State of New York, 
Respectfully represents : 

That he has made certain improvements in the machine for making 
wool cards, and that he is now engaged in making experiments for the 
purpose of perfecting the same, preparatory to his applying for letters- 
patent therefor. He therefore prays that the subjoined description of 
his invention may be filed as a caveat, in the confidential archives of 
the Patent Office, agreeably to the provisions of the act of Congress in 
that case made and provided ; he having paid twenty dollars into the 
Treasury of the United States, and otherwise complied with the require- 
ments of the said act. 

AMOS WHITTEMORE. 

JVew York, July 16, 1849. 



GUIDE TO THE PATENT OFFICE. 239 

Here should follow a description of the general principles 
of the invention, so far as it has been completed. 

§ XIV. OF THE DURATION OF PATENTS, AND THE PENALTY 
FOR ILLEGALLY STAMPING ARTICLES. 

The term for which a regular patent is granted is fourteen 
years ; but it may, under certain circumstances, be extended 
for seven, years, as hereinbefore mentioned. Patents for 
designs are granted for seven years only. 

Stamping or affixing the name of any patentee on any 
article, without authority so to do, or affixing the word 
patent, or letters-patent, or the stamp, mark, or device of 
any patentee, on any unpatented article, is forbidden under 
a penalty of not less than one hundred dollars. 

Patentees or their assignees are required to affix the date 
of the patent on each article vended or offered for sale, under 
a like penalty — thus affording to the public notice of the 
duration of the patent. When the article is of such a nature 
that the name of the patentee cannot be printed thereon, it 
should be affixed to the case or package containing it. 



§ XV. OF THE RE-PAYMENT OF MONEY DEPOSITED BY 
MISTAKE. 

The 1st section of the act of 1842 authorizes the treasurer 
of the United States to pay back any money which has been 
paid into the treasury by actual mistake, as for patent fees, 
thus precluding the necessity of special application to Con- 
gress for relief, and is in the following words : that " the 
treasurer of the United States be, and he hereby is, author- 
ized to pay back, out of the patent fund, any sum or sums of 
money, to any receiver or depository to the credit of the 
treasurer, as for fees accruing at the Patent Office through 
mistake, and which are not provided to be paid by existing 
laws, certificate thereof being made to said treasurer by the 
Commissioner of Patents." 



240 GUIDE TO THE PATENT OFFICE. 

§ XVI. OF GRANTING ANEW LOST PATENTS, AND SUCH AS 
WERE DESTROYED BY THE FIRE OF 1836. 

The 3d section of the act of March 3, 1837, provides : 
" That whenever it shall appear to the Commissioner that 
any patent was destroyed by the burning- of the Patent 
Office building on the aforesaid fifteenth day of December, 
or was otherwise lost prior thereto, it shall be his duty, on 
application therefor by the patentee, or other person inter- 
ested therein, to issue a new patent, for the same invention 
or discovery, bearing the date of the original patent, with 
his certificate thereon, that it was made and issued pursuant 
to the provisions of the 3d section of this act, and shall enter 
the same of record : Provided, hoioever, that, before such 
patent shall be issued, the applicant therefor shall deposit in 
the Patent Office a duplicate, as near as may be, of the 
original model, drawings, and description, with specification 
of the invention or discovery, verified by oath, as shall be 
required by the Commissioner ; and such patent and copies 
of such drawings and descriptions, duly certified, shall be 
admissible as evidence in any judicial court of the United 
States, and shall protect the rights of the patentee, his ad- 
ministrators, heirs, and assigns, to the extent only in which 
they would have been protected by the original patent and 
specification." 

The privilege of renewal of lost patents is now extended 
to those granted before the fire of December, 1836. For- 
merly it was limited to those actually lost before the fire, 
thus excluding many lost subsequently, and before they 
were recorded anew in this office, leaving the inventor with- 
out remedy. 

FORM OF OATH ON RESTORING DRAWINGS, OR SKETCHES FROM 
WHICH DRAWINGS MAY BE EIADE, TO REPLACE THE ORIGI- 
NALS DESTROYED IN THE OFFICE. 

City and county of JVew Fork, } 
State of JVew York. 5 ^^^ 

On the first day of March, 1838, before the subscriber, a 



GUIDE TO THE PATENT OFFICE. 241 

personally appeared, Robert Fulton, of the city of New York, and 
made solemn oath that he is the inventor [or is interested in the in- 
vention as administrator, ^c.,] of an improved mode 

for -which letters-patent of the United States -were 
granted to him, dated the day of 

and the annexed draiving [or sketch'\ is, as he verily believes, a true 
delineation of the invention described in the said letters-patent. 

A. B. 

N. B. Patentees, and the public in general, are urged to 
use their influence to aid the ofSce in restoring the records 
of all patents and assignments on record before the fire in 
December, 1S36. The same cannot be used in evidence 
•unless so recorded anew. No expense is incurred. The 
papers are received and transmitted by mail free of postage. 

§ XVn. OF ASSIGNMENTS. 

An inventor can assign his entire right before a patent is 
obtained, so as to enable the assignee to take out a patent 
in his own name ; but the assignment must be first entered 
of record ; and the application therefor must be duly made, 
and the specification signed and sworn to by the inventor. 
In the case of an assignment by a foreigner, the same fee 
will be required as if the patent issued to the inventor. 

The assignment of a patent may be of the whole or of 
an undivided part, " by any instrument in writing." All 
assignments, and also the grant or conveyance of the use of 
the patent in any town, county, state, or specified district, 
must be recorded in the Patent Office within three months 
from thci date of the same. But assignments, if recorded 
after three months have expired, will be on record as notice 
to protect against subsequent purchasers. Grants and 
assignments, recorded prior to the 15th December, 1836, 
must be recorded anew before they can be valid as evidence 
of any title. 

In all cases in which the entire invention has been 
assigned before the issue of the patent, the correspondence 
21 



S42 GUIDE TO THE PATENT OFFICE. 

should be in the name of the assignee, he being the party 
in interest. 

By the act of May 27, 1848, the Commissioner of 
Patents is directed to charge fees for recording assignments, 
powers of attorney, licenses, &c., at the following rates, 
viz : 

On all assignments, &c., which shall not contain 

over 300 words, $1 00 

On all assignments, &c., containing more than 300 

words and not more than 1 000 words, . . 2 00 

On all assignments, &c., containing more than 

1000 words, 3 00 

Which fees are, in all cases, to be paid in advance, in 
specie. 

The receipt of assignments is never acknowledged by the 
office, but they are generally recorded in their turn, and 
transmitted to the persons entitled to them. 

FORM OF ASSIGNMENT OF AN ENTIRE INVENTION, BEFORE 
OBTAINING LETTERS-PATENT, AND TO BE RECORDED PRE- 
PARATORY THERETO. 

Whereas I, Jetliro Wood, of Scipio, in the county of Cayuga, and 
State of New York, have invented certain new and useful impro Ye- 
men ts in ploughs, for which I am about to make application for letters- 
patent of the United States ; and whereas David Peacock, of Burling- 
ton, New Jersey, has agreed to purchase from me all the right, title, 
and interest which I have, or may have, in and to the said invention, 
in consequence of the grant of letters-patent therefor, and has paid 
to me, the said Wood, the sum of five thousand dollars, the receipt of 
which is hereby acknowledged: Now, this indenture witnesseth, that 
for and in consideration of the said sum to me paid, I have assigned 
and transferred, and do hereby assign and transfer, to the said David 
Peacock, the full and exclusive right to all the improvements made by 
me, as fully set forth and described ia the specification which I have 
prepared and executed, preparatory to the obtaining of letters-patent 
therefor. And I do hereby authorize and request the Commissioner 
of Patents to issue the said letters-patent to the said David Peacock, 
as the assignee of my whole right and title thereto, for the sole use 
and behoof of the said David Peacock and his legal representatives. 



GTTIDE TO THE PATENT OFFICE. 243 

In testimony -whereof, I have hereunto set my hand and affixed my 
seal this sixteenth day of July, 1849. 

JETHRO WOOD, [l. s.] 
Sealed and delivered in the presence of — 
George Cltjier, 
David Kitten house. 

FORM OF ASSIGNMENT OF A PARTIAL RIGHT IN A PATENT. 

Whereas I, Jethro Wood, of Scipio, in the county of Cayuga, and 
State of New York, did obtain letters-patent of the United States for 
certain improvements in ploughs, which letters-patent bear date the 
first day of March, 1838; and whereas David Peacock, of Burling- 
ton, New Jersey, is desirous of acquiring an interest therein : now, 
this indenture Avitnesseth, that, for and in consideration of the sum 
of two thousand dollars, to me in hand paid, the receipt of which is 
hereby acknowledged, I have assigned, sold and set over, and do 
hereby assign, sell, and set over, unto the said David Peacock, all the 
right, title, and interest which I have in the said invention, as secured 
to me by said letters-patent, for, to, and in the several States of New 
York, New Jersey, and Pennsylvania, and in no other place or places. 
The same to be held and enjoyed by the said David Peacock, for his 
own use and behoof, and for the use and behoof of his legal repre- 
sentatives, to the full end of the term for which said letters-patent are 
or may be granted, as fully and entirely as the same would have been 
held and enjoyed by me had this assignment £fnd sale not been made. 

In testimony whereof, I hereunto set my hand and affix my seal, 
this sixteenth day of July, 1849. 

JETHRO WOOD, [l. s.] 

Sealed and delivered in the presence of — 
Jacob Perkins, 
Benjamin Frankxin. 

§ XVm. OF THE FEES — HOW PAYABLE. 

All fees must be paid in specie, and in advance, except 
those - required for drawings and copies, the expense of 
which will be communicated on application for the same. 

Every applicant, on presenting his petition or application, 
must pay into the Treasury of the United States, or into 
the Patent Office, or to any of the Assistant Treasurers, 
Treasurers of the Mint and Branch Mints, Collectors and 



244 GTTIDE TO THE PATENT OFFICE. 

Surveyors of Customs, and Receivers of Public Money par- 
ticularly named below, a deposit to the credit of the Treas- 
urer, as follows : 

If a citizen of the United States, as a patent fee, $30 00 
If a foreigner, who has resided in the United 
States one year next preceding the application 
for a patent, and shall have made oath of his 
intention to become a citizen, . . . 30 00 

If a subject of the sovereign of Great Britain, . 600 00 

All other foreigners, 300 00 

On entering a caveat, . . . . . 20 00 
On entering an application for an appeal from 

the decision of the Commissioner, . . . 25 00 
On extending the patent beyond the fourteen 

years, 40 00 

For adding to a patent the specifications of a sub- 
sequent improvement, . . . . . 15 00 

In case of reissues, for every additional patent, 30 00 

On surrender of an old patent, to be reissued to 

correct a mistake of the patentee, . . . 15 00 
On application for a»design, . . . . 15 00 

For a disclaimer, . . . . . . 10 00 

For copies of patents, or any other paper on file, 

for each 100 words, ..... 10 

On all assignments, &c., which shall not contain 

over 300 words, 1 00 

On all assignments, &c., containing more than 

300 and not more than 1000 words, . . 2 00 

On all assignments, &c., containing more than 

1000 words, 3 00 

For copies of drawings, a reasonable sum, in proportion 
to the time occupied in making the same. 

Fees, when sent direct to the Commissioner in specie, 
should be firmly attached to the letter, to avoid the danger 
of loss from becoming loose, and wearing through the 
envelope. 



GUIDE TO THE PATENT OFFICE. 245 

It is recommended to make a deposit with an Assistant 
Treasurer, or other officer authorized to receive public 
moneys, of the fee for a patent or other application, and to 
remit the certificate. Where this cannot be done without 
much inconvenience, gold may be remitted by mail, at the 
risk of the applicant. 

In case of deposit made with the Assistant Treasurers, 
or other persons authorized to receive public moneys, a 
duplicate receipt should be taken, stating by whom the 
payment was made, and for what object. The particular 
invention should be referred to, to enable the applicant to 
recover back the twenty dollars, in case of the withdrawal 
of the petition. The certificate of deposit may be made 
in the following form : 

Office of the 

Tlie Treasurer of the United States has credit at this ofSce for 
dollars in specie, deposited by , of the town of , in 

the county of , and State of , the same 

being for a patent \_or whatever the object may be'] for a steam boiler. 

A. B. 

Officers who are authorized to receive Patent Fees on account of the 
Treasury of the United States, and to give receipts or certificates 
of deposit therefor, viz. : 

Assistant Treasurer of the United States, Boston, Mass. 
Assistant Treasurer of the United States, New York, N. Y. 
Treasurer of the Mint, Philadelphia, Penn. 
Surveyor and Inspector, Pittsburg, Penn. 
Assistant Treasurer of the United States, Charleston, S. C- 
Collector, Baltimore, Md. , 

Collector, Eichmond, Va. 
Collector, Norfolk, Va. 
CoUector, Buffalo Creek, N. Y. 
Collector, Wilmington, N. C. 
Collector, Savannah, Ga. 
Collector, Mobile, Ala. 
Treasurer Branch Mint, New Orleans, La. 
21# 



246 GUIDE TO THE PATENT OFFICE. 

Assistant Treasurer United States, St. Louis, Mo. 

Surveyor of the Customs, Nashville, Tenn. 

Surveyor of the Customs, Cincinnati, Ohio. 
Receiver of Public Moneys, Little Rock, Ark. 
Receiver of Public Moneys, Jeflfersonville, Ind. 
Receiver of Public Moneys, Chicago, 111. 
Receiver of Public Moneys, Detroit, Mich. 

Any person wishing to pay a Patent Fee may deposit 
it with either of the officers above named, and forward the 
receipt or certi6cate to this office, as evidence thereof. 

Money sent by mail is at the risk of the person sending 
the same. And all money sent from the office, by mail, is 
at the risk of the person requesting to have it transmit- 
ted in that way. In no case should money be sent inclosed 
with models. 

§ XIX. OF PATENT AGENTS. 

There is, in this and other cities, a class of persons de- 
nominated " Patent Agents," or " Patent Attorneys," whose 
occupation is to offer advice and render assistance to indi- 
viduals having business with the office. From certain 
information which has come to the knowledge of the Com- 
missioner, it is deemed necessary to observe, that, whatever 
may be said to the contrary, no greater facilities are extended 
to them than to the inventor who makes his own applica- 
tion. The rules and regulations contained in this pamphlet 
are as much for their guidance as for the direction of the 
applicant himself, and as strict a compliance with them is 
required of one as of the other. Personal influence avails 
neither. Patents are granted or rejected upon the merits 
of the cases presented ; and there are no circumstances 
which can, with the knowledge of the undersigned, be 
brought to bear, to turn the office from the strictest impar- 
tiality. 

To relieve applicants from the expense of employing 



GUIDE TO THE PATENT OFFICE. 247 

agents, the examiners will decide questions of novelty and 
patentability upon papers imperfectly prepared, if sufficiently 
perspicuous to be understood, when such papers are prepared 
by the inventor himself. But if an agent be employed, it is 
presumed that he is qualified for the business he has under- 
taken without calling on the office for instructions. 

Inventors desirous of examining models before making 
application, should apply to the Commissioner, or chief clerk, 
who will direct the machinist to aid them in all necessary 
inquiries. This caution is given to save applicants from 
impositions to which they are exposed. If the services of 
patent agents are desired, able and faithful ones can be found 
at their offices in this and other cities. 

Patent agents who have filed a full power of attorney, 
authorizing them to receive letters-patent for the patentees, 
will be allowed to take them from the office, after which 
they cannot be returned, with a view to be transmitted to 
the inventor under the frank of the Commissioner. If agents 
retain the patents of their clients in their possession after 
they have been issued, it is a private matter between the 
patentee and his attorney, with which the office has noth- 
ing to do. 

It is hardly necessary to state that no fees are received in 
this office except those provided for by law, and that no 
offers of suras of money, or payment of the same to third 
parties, can influence the decision upon a case, or hasten the 
period of its examination. 

§ XX. OF CORRESPONDENCE. 
In answer to an inquiry addressed to the First Assistant 
Postmaster General, touching mailable matter, the following 
letter has been received : 

" Post-Office Department, Contract Office, ) 
August 30, 1849. } 

"To Thomas Ewbank, Esq., Covimissioner of Patents. 
Sir, — I hasten to say, in answer to your inquiry of 



248 GtJIDE TO THE PATENT OFFICE. 

to-day, that what may be sent by mail is specified by acts 
of Congress to be letters, letters enclosing money, news- 
papers, magazines, pamphlets, and all other written or 
printed matter, whereof each copy or number shall not ex- 
ceed eight ounces, packages thereof not exceeding three 
pounds in weight; public documents printed by order of 
either house of Congress ; and books and documents inter- 
changed between the Executives of States. Neither models 
of machines, nor the substances of which they are usually 
composed, — wood, glass, tin, or other metals, — are entitled, 
by law or regulation, to transmission in the mail ; and the 
mailing and forwarding of them will be refused in every 
instance where the required care is taken at the post-office 
to exclude unmailable matter. 

" Respectfully, your obedient servant, 

" S. R. HOBBIE, 
" First Assistant Postmaster General," 

All communications relating to official transactions should 
be addressed to the Commissioner of Patents ; no other can 
receive attention ; and it must not be regarded as discour- 
teous if private letters to employees in office are returned 
without reply; nor must correspondents complain, even if 
their letters are properly addressed to the Commissioner, if 
their business receives no attention from the office, when 
their signatures are so illegibly written as to render it im- 
possible to decipher them, or when the post-office and State 
(or either of them) are omitted in their address. 

No double correspondence can be sanctioned. When an 
inventor employs an agent, the office will correspond with 
either, but not with both. This remark is necessary from 
the numerous letters received from applicants asking for 
information of what their attorneys have done, and often 
protesting against their acts. 

Telegraphic communications, if not received before 3 
P. M., cannot be answered till the following day; the greater 



GUIDE TO THE PATENT OFFICE. 249 

part arrive after the office has been closed. Moreover, 
signatures are someUmes so illegibly written that telegraphic 
operators misinterpret them, and the office is consequently 
at a loss properly to translate them. 

§XXI. PATENT OFFICE REPORTS. 

These are generally submitted to Congress in January, 
and comprehend the transactions of the office during the 
preceding year; but, from causes over which this bureau has 
no control, they are seldom printed until the current year 
has nearly expired. In the mean time, letters are constantly 
being received from citizens of every profession and section 
of the Union, asking for copies, under the mistaken idea 
that their distribution is under the control of the office. So 
far from this being the fact, a very limited number only is 
placed by Congress at its disposal; e. g., of the report for 

1847, ONE HUNDRED AND THIRTY-FIVE THOUSAND COPIES were 

printed, of which three thousand were appropriated to the 
Patent Office. The remaining one hundred and thirfy-two 
thousand were subject to the orders and disposal of members 
of Congress. Of the report for 1848, seventy-five thousand 
were ordered ; of these, twenty-five hundred were sent to 
this bureau, and of them only five hundred had the list of 
patents a?id claims annexed. 

It will be perceived that the office does not receive half 
the number inventors and patentees call for; and, as far as 
possible, it is deemed right first to supply them. Persons, 
therefore, desiring reports should distinctly state the grounds 
upon which their requests are preferred. If it shall appear 
that they have contributed to the support of the office by the 
payment of fees, or to the information contained in the agri- 
cultural report, their names will be entered upon a list kept 
for that purpose, and when the document is ready for distri- 
bution, copies will be sent to their address in the order of 
their applications. With few exceptions, the office is com- 



250 GUIDE TO THE PATENT OFFICE. 

pelled to refer other citizens to the members of Congress 
from their districts. 

THOMAS EWBANK, 
Commissio7ier of Patents. 
Patent Office, February 11, 1851. 

BEQUEST. 

Congress having authorized the collection and distribution 
of seeds through this office, a transmission to this place of 
any rare and useful seeds may confer a great benefit on the 
community, and will, so far as practicable, be reciprocated 
by the Commissioner. A history of the seed transmitted, 
together with the place of production, is respectfully solicited. 



LAWS OF THE UNITED STATES 



KELATING TO 



PATENTS AND THE PATENT OEEICE. 



LAWS OF THE UNITED STATES RELATING TO PA- 
TENTS AND THE PATENT OFFICE. 

CONSTITUTION OF THE UNITED STATES. 
ARTICLE FIRST, SECTION EIGHTH. 

" The Congress shall have power, &c., to pro- 
mote the progress of science and useful arts, by- 
securing for limited times to Authors and Inventors 
the exclusive right to their respective writings 
and discoveries." Also, " to make all laws which 
shall be necessary and proper for carrying into 
execution the foregoing powers." 



CHAP. VII. — An Act to promote the progress of useful arts. 

Section 1. Be it enacted by the Senate and Patents for 
House of Represe7itatives of the United States of coveries.hnw 

/I • • /-I 77 7 mi 1 applied for, 

America in Longress assembtea, inat upon the and granted. 

... 1 o Repealed by 

petition 01 any person or persons to the oecre- the act of 
tary of State, the Secretary for the department ry, 1793, ch! 
of War, and the Attorney General of the United The Secre 
States, setting forth, that he, she, or they, hath [h7 Secreia- 
or have invented or discovered any useful art, and°the^At- 
manufacture, engine, machine, or device, or any rai"%r^l'!iy 
improvement therein not before known or used, f^?j°'^'^''u"}i 
and praying that a patent may be granted there- ^^^'^. ihe 'n- 

■^ •' ° i J & veniion,&c., 

for. it shall and may be lawful to and for the said useful and 

*' important, to 

Secretary of State, the Secretary for the depart- cause letters- 

c TTir 11. Vi 1 patent to ba 

ment 01 War, and the Attorney General, or any issued. 
two of them, if they shall deem the invention or 

22 



254 LAWS OF THE UNITED STATES 

discovery sufficiently useful and important, to 
cause letters-patent to be made out in the name 
of the United States, to bear teste by the Presi- 
dent of the United States, reciting the allegations 
and suggestions of the said petition, and describ- 
ing the said invention or discovery, clearly, truly, 
and fully, and thereupon granting to such peti- 
tioner or petitioners, his, her or their heirs, 
Continu- administrators or assigns, for any term not exceed- 
ieiu.° ing fourteen years, the sole and exclusive right 

and liberty of making, constructing, using, and 
vending to others to be used, the said invention 
or discovery; wrhich letters-patent shall be deliv- 
ered to the Attorney General of the United States 
to be examined, who shall, within fifteen days 
next after the delivery to him, if he shall find the 
Gen'i toceJ- same conformable to this act, certify it to be so at 
firmk^y "^"of the foot thereof, and present the letters-patent so 
^ththisac"! certified to the President, who shall cause the 
seal of the United States to be thereto affixed, 
and the same shall be good and available to the 
grantee or grantees by force of this act, to all and 
every intent and purpose herein contained ; and 
Patents to shall be recorded in a book to be kept for that 
e recor e . pjjj,pQgg jj^ ^^le office of the Secretary of State, 
and delivered to the patentee or his agent, and 
the delivery thereof shall be entered on the record 
and endorsed on the patent by the said Secretary 
at the time of granting the same. 
Specifica- Sec. 2. And be it further enacted, That the 
ing, with a grantee or grantees of each patent shall, at the 
eUhere(^,°io time of granting the same, deliver to the Secre- 
and^fii'ed^m tary of State a specification in writing, containing 
the &cre°I- a description, accompanied with drafts or models, 
ry of Slate. ^^^ explanations and models, (if the nature of the 
invention or discovery will admit of a model,) of 



EELATING TO PATENTS, ETC. 255 

the thing' or things by him or them invented or 
discovered, and described as aforesaid, in the said 
patents ; which specification shall be so particular, 
and said models so exact, as not only to distin- 
guish the invention or discovery from other things 
before known and used, but also to enable a work- 
man, or other person skilled in the art or manu- 
facture whereof it is a branch, or wherewith it 
may be nearest connected, to make, construct, or 
use the same, to the end that the public may have 
the full benefit thereof, after the expiration of the 
patent term ; which specification shall be filed in 
the ofilce of the said Secretary, and certified Certified 
copies thereof shall be competent evidence in all ^°hat cases to 
courts and before all jurisdictions, where any ^^ ^^"^«"'=^- 
matter or thing, touching or concerning such 
patent, right, or privilege, shall come in question. 

Sec. 3. And be it further enacted, That upon Copies of 

, ,. . . 1 £M c specification 

the application of any person to the secretary oi and models 
State, for a copy of any such specification, and ^t^ 
for permission to have similar model or models 
made, it shall be the duty of the Secretary to give 
such copy, and to permit the person so applying 
for a similar model or models to take, or make or 
cause the same to be taken or made, at the ex- 
pense of such applicant. 

Sec. 4. A7id be it further enacted, That if any Penalty for 

•' •' making, &c., 

person or persons shall devise, make, construct, any an, &c., 

1 1 • 1 • 1 TT • 1 CI f"'' ^'^''^'^ ^ 

use, employ, or vend within these United btates, patent has 

. beengranied. 

any art, manufacture, engme, machine, or device, 
or any invention or improvement upon or in any 
art, manufacture, engine, machine, or device, the 
sole and exclusive right of which shall be so as 
aforesaid granted by patent to any person or per- 
sons, by virtue and in pursuance of this act, with- 
out the consent of the patentee, or patentees, their 



§56 LAWS OF THE UNITED STATES 

executors, administrators or assigns, first had and 
obtained in writing, every person so offending 
shall forfeit and pay to the said patentee or paten- 
tees, his, her, or their executors, administrators or 
Damages to assigns, such damages as shall be assessed by a 

be assessed ' , ,, r r , 

by a jury, jury, and moreover shall forfeit to the person 
aggrieved the thing or things so devised, made, 
constructed, used, employed, or vended, contrary 
to the true intent of this act, which may be recov- 
ered in an action on the case founded on this act. 
Sec. 5. And be it further enacted, That upon 
oath or affirmation made before the judge of the 
district court, where the defendant resides, that 
any patent which shall be issued in pursuance of 

rfpi'mousiy' this act was obtained surreptitiously by or upon 

obiaiueu. {^{sq suggestion, and motion made to the said 
court, within one year after issuing the said 
patent, but not afterwards, it shall and may be 
lawful to and for the judge of the said district 
court, if the matter alleged shall appear to him to 
be sufficient, to grant a rule that the patentee or 
patentees, his, her, or their executors, administra- 
tors or assigns, show cause why process should 
How to be not issue against him, her, or them, to repeal such 

repeae . patents; and if sufficient cause shall not be shown 
to the contrary, the rule shall be made absolute, 
and thereupon the said judge shall order process 
to be issued as aforesaid, against such patentee 
or patentees, his, her, or their executors, adminis- 
trators, or assigns. And in case no sufficient 
cause shall be shown to the contrary, or if it shall 
appear that the patentee was not the first and true 
inventor or discoverer, judgment shall be rendered 
by such court for the repeal of such patent or 
patents ; and if the party at whose complaint the 
process issued shall have judgment given against 



RELATING TO PATENTS, ETC. 

him, he shall pay all such costs as the defendant 
shall be put to in defending the suit, to be taxed 
by the court, and recovered in such manner as 
costs expended by defendants shall be recovered 
in due course of law. 

Sec. 6. And be it further enacted, That in all 



257 



tentees, his, her, or their executors, administrators 



In artions 
for ppiialty, 

actions to be brought bv such patentee or pa- paieni=iioba 

^ J ^ ^ deemed pri- 

la lacie evi- 

. , . , , . f, deuce of the 

or assigns, for any penalty incurred by virtue oi first, discov- 
this act, the said patents or specifications shall be special ma"- 
prima facie evidence, that the said patentee or gWeuTn evi^ 
patentees was or were the first and true inventor io"what^ef- 



or inventors, discoverer or discoverers, of the thing 
so specified, and that the same is truly specified ; 
but that nevertheless the defendant or defendants 
may plead the general issue, and give this act, 
and any special matter whereof notice in writing 
shall have been given to the plaintiff, or his attor- 
ney, thirty days before the trial, in evidence, tend- 
ing to prove that the specification filed by the 
plaintiff does not contain the vs^hole of the truth 
concerning his invention or discovery; or that it 
contains more than is necessary to produce the 
effect described ; and if the concealment of part, 
or the addition of more than is necessary, shall 
appear to have been intended to mislead, or shall 
actually mislead the public, so as the effect de- 
scribed cannot be produced by the means specified, 
then, and in such cases, the verdict and judgment 
shall be for the defendant. 

Sec. 7. And he it further enacted, That such 
patentee, as aforesaid, shall, before he receives his 
patent, pay the following fees to the several offi- 
cers employed in making out and perfecting the 
same, to wit: For receiving and filing the pe- 
tition, fifty cents; for filing specifications, per 
22* 



feet. 



258 LAWS OF THE UNITED STATES 

copy-sheet containing one hundred words, ten 
cents ; for making out patent, two dollars ; for 
affixing great seal, one dollar; for endorsing the 
day of delivering the same to the patentee, includ- 
ing all intermediate services, twenty cents. 
Approved April 10, 1790. 



CHAP. IX. — An Act to promote the progress of useful 
arts, and to repeal the act heretofore made for that purpose. 

Act of 1790, Section 1. Be it enacted by the Senate and 

chap. 7. '' 

House of Representatives of the United States of 
America in Congress assembled, That when any 
person or persons, being a citizen or citizens of 
the United States, shall allege that he or they 
te^i^"^how^ have invented any new and useful art, machine, 
malie^oui'^"'" manufacture, or composition of matter, or any new 
^ciorApni and useful improvement on any art, machine, 
33, repealed, manufacture, or composition of matter, not known 
or used before the application, and shall present a 
petition to the Secretary of State, signifying a 
desire of obtaining an exclusive property in the 
same, and praying that a patent may be granted 
therefor, it shall and may be lawful for the said 
Secretary of State to cause letters-patent to be 
To bear teste made out in the name of the United States, bear- 
dent, and ing teste by the President of the United States, 
reciting the allegations and suggestions of the said 
petition, and giving a short description of the said 
invention or discovery, and thereupon grapting to 
such petitioner, or petitioners, his, her, or their 
heirs, administrators or assigns, for a term not 
exceeding fourteen years, the full and exclusive 
right and liberty of making, constructing, using, 
and vending to others to be used, the said inven- 
tion or discovery, which letters-patent shall be 
be examined delivered to the Attorney General of the United 
ney General" States, to be examined ; who, within fifteen days 



RELATING TO PATENTS, ETC. 259 

after such delivery, if he finds the same conform- 
able to this act, shall certify accordingly, at the 
foot thereof, and return the same to the Secretary 
of State, who shall present the letters-patent thus 
certified, to be signed, and shall cause the seal of 
the United States to be thereto affixed : and the 
same shall be good and available to the grantee 
or grantees, by force of this act, and shall be ^^^> ^^- ^^ 
recorded in a book, to be kept for that purpose, in 
the office of the Secretary of State, and delivered 
to the patentee or his order. 

Sec. 2. Provided always, and be it further The liberty 

"" ' -^ of using an 

enacted, That any person, who shall have dis- improvemem 
covered an improvement in the principle of any 
machine, or in the process of any composition of 
matter, which has been patented, and shall have 
obtained a patent for such improvement, he shall 
not be at liberty to make, use or vend the original 
discovery, nor shall the first inventor be at liberty 
to use the improvement : And it is hereby enacted 

. . Changing' 

and declared, that simply changing the form or the form or 

, ■ c u- ■.• c Proporiions 

trie proportions of any machme, or composition of of any ma- 
matter, in any degree, shall not be deemed a dis- not to be a 

discovery. 

covery. 

Sec. 3. And be it further enacted, That every Howtopro- 

•^ . ceed to ob- 

inventor, before he can receive a patent, shall tain letters- 

swear or affirm, that he does verily believe that 

he is the true inventor or discoverer of the art, ..i^oo, ch. 

' 2o, sec. 2. 

machine, or improvement, for which he solicits a 
patent, which oath or affirmation maybe made 
before any person authorized to administer oaths, 
and shall deliver a written description of his in- 
vention, and of the manner of using, or process _ Specifica- 
of compounding the same, in such full, clear, and 
exact terms, as to distinguish the same from all 
other things before known, and to enable any per- 



LAWS OF THE UNITED STATES 



Specifica- 
tion. 



Inventors 
may assign 
their lilies. 

Record of 
assisnment 
to be made 
in ihe office 
of the Secre- 
tary of State. 



Forfeiture 
on using pa- 
tented inven- 
tious with- 
out leave. 



son skilled in the art or science of which it is a 
branch, or with which it is most nearly connected, 
to make, compound, and use the same. And in 
the case of any machine, he shall fully. explain 
the principle, and the several modes in which he 
has contemplated the application of that principle 
or character, by which it may be distinguished 
from other inventions; and he shall accompany 
the whole with drawings and written references, 
where the nature of the case admits of drawings, 
or with specimens of the ingredients, and of the 
composition of matter, sufficient in quantity for 
the purpose of experiment, where the invention 
is of a composition of matter ; which description, 
signed by himself, and attested by two witnesses, 
shall be filed in the office of the Secretary of State, 
and certified copies thereof shall be competent 
evidence in all courts, where any matter or thing, 
touching such patent right, shall come in ques- 
tion. And such inventor shall, moreover, deliver 
a model of his machine, provided the Secretary 
shall deem such model to be necessary. 

Sec. 4. And be it further enacted, That it 
shall be lawful for any inventor, his executor or 
administrator, to assign ihe title and interest in 
the said invention, at any time; and the assignee 
having recorded the said assignment in the office 
of the Secretary of State, shall thereafter stand 
in the place of the original inventor, both as to 
right and responsibility, and so the assignee of 
assigns, to any degree. 

Sec. 5. And be it further enacted, That if any 
person shall make, devise, and use, or sell the 
thing so invented, the exclusive right of which 
shall, as aforesaid, have been secured to any per- 
son by patent, without the consent of the patentee, 



RELATING TO PATENTS, ETC. 261 

his executors, administrators, or assigns, first ob- 
tained in writing, every person so offending shall 
forfeit and pay to the patentee a sum, that shall 
be at least equal to three times the price for Three times 
which the patentee has usually sold or licensed be^ihe'"ea° 
to other persons the use of the said invention; ^'^' 
which may be recovered in an action on the case How recov- 

ered. 

founded on this act, in the Circuit Court of the 
United States, or any other court having compe- 
tent jurisdiction. 

Sec. 6. Provided always, and be it further en- Howdefen- 

, danls may 

acted, That the defendant in such action shall be give this act 

, 111 1 • 1 ■ 1 • '1 evidence. 

permitted to plead the general issue, and give this 
act, and any special matter, of which notice in 
writing may have been given to the plaintiff, or 
his attorney, thirty days before trial, in evidence, 
tending to prove that the specification, filed by 
the plaintiff does not contain the whole truth 
relative to his discovery, or that it contains more 
than is necessary to produce the described effect, 
which concealment or addition shall fully appear 
to have been made for the purpose of deceiving 
the public, or that the thing, thus secured by 
patent, was not originally discovered by the pa- 
tentee, but had been in use, or had been described 
in some public work, anterior to the supposed dis- 
covery of the patentee, or that he had surrepti- > 
tiously obtained a patent for the discovery of 
another person : in either of which cases, judgment * ^ • . 
shall be rendered for the defendant, with costs, mem shall be 

given. 

and the patent shall be declared void. 

Sec. 7. And he it further enacted, Th^iviiietQ state rights 

-' to inven- 

any State, before its adoption of the present form tions when 

■' '^ ^ to be deemed 

of government, shall have granted an exclusive void, 
right to any invention, the party claiming that 
right shall not be capable of obtaining an exclusive 



203 LAWS OF THE UNITED STATES 

right under this act ; hut on relinquishing his right 
under such particular State, and of such relin- 
quishment, his obtaining an exclusive right under 
this act shall be sufficient evidence. 
Howappii- Sec. 8. Arid be it further enacted, That the 

cations de- . . 

pending un- persous whose application for patents were, at the 

der former . 

law shall be time of passmg this act, depending before the 
under this Secretary of State, Secretary of War, and Attor- 
ney General, according to the act, passed the sec- 
1790, ch. 7. ond session of the first Congress, entitled " An 
Act to promote the progress of useful arts," on 
complying with the conditions of this act, and pay- 
ing the fees herein required, may pursue their 
respective claims to a patent under the same. 
Proceedings Sec. 9. And be it further enacted, That in case 
interVrfng""^ of interfering applications, the same shall be sub- 
appiicaiioiis. j^^itted to the arbitration of three persons, one of 
whom shall be chosen by each of the applicants, 
and the third person shall be appointed by the 
Secretary of State; and the decision or award of 
such arbitrators, delivered to the Secretary of 
State in writing, and subscribed by them, or any 
two of them shall be final, as far as respects the 
granting of the patent; And if either of the appli- 
cants shall refuse or fail to choose an abitrator, the 
patent shall issue to the opposite party. And 
where there shall be more than two interfering 
applications, and the parties applying shall not 
all unite in appointing three abitrators, it shall be 
in the power of the Secretary of State to appoint 
three arbitrators for the purpose. 
Anda-'ainst Sec. 10. And be it further enacted, That upon 
persons sur- Qj^f^)^ qj. affirmation being made before the judge 
obtainingpa- of the district court, where the patentee, his 

tents. _ ' . . 

executors, administrators, or assigns reside, that 
any patent, which shall be issued in pursuance of 



RELATING TO PATENTS, ETC. 263 

this act was obtained surreptitiously, or upon 
false suggestion, and motion made to the said 
court, within three years after issuing the said 
patent, but not afterwards, it shall and may be 
lawful for the judge of the said district court, if 
the matter alleged shall appear to him to be 
sufficient, to grant a rule, that the patentee, or his 
executor, administrator, or assign, show cause why 
process should not issue against him to repeal 
such patent. And if sufficient cause shall not be 
shown to the contrary, the rule shall be made 
absolute, and thereupon the said judge shall order 
process to be issued against such patentee, or his 
executors, administrators, or assigns, with costs of 
suit. And in case no sufficient cause shall be 
shown to the contrary, or if it shall appear that 
the patentee was not the true inventor or discov- Eepeai of 
erer, judgment shall be rendered by such court t^.J^ly'^^ ob- 
for the repeal of such patent; and if the party at ^^'"^'^• 
whose complaint the process issued shall have 
judgment given against him, he shall pay all such 
costs as the defendant shall be put to in defend- 
ing the suit, to be taxed by the court, and recov- 
ered in due course of law. 

Sec. 11. And be it further enacted, That every inventor, 
inventor, before he presents his invention to the ser°.^ng p'^u- 
Secretary of State, signifying his desire of obtain- 330 vTo the 
ing a patent, shall pay into the treasury thirty "easury. 
dollars, for which he shall take duplicate receipts; 
one of which receipts he shall deliver to the Secre- 
etary of State, when he presents his petition; and 
the money, thus paid, shall be in full for the sundry 
services to be performed in the office of the Sec- 
retary of State, consequent on such petition, and 
shall pass to the account of clerk hire in that 
office. Provided, nevertheless. That for every 



264 LAWS OF THE UNITED STATES 

Copying copy which may be required at the said office, of 
any paper respecting any patent that has been 
granted, the person obtaining such copy shall pay, 
at the rate of twenty cents, for every copy-sheet 
of one hundred words, and for every copy of a 
drawing, the party obtaining the same shall pay 
two dollars ; of which payments an account shall 
be rendered annually to the treasury of the United 
States, and they shall also pass to the account of 
clerk hire in the office of the Secretary of State. 
Act of April Sec. 12. And be it further enacted, That the 
7, repealed, act, passed the tenth day of April, in the year one 
thousand seven hundred and ninety, entitled "An 
Act to promote the progress of useful arts," be, 
Proriso. and the same is, hereby repealed. Provided, 
always. That nothing contained in this act shall 
be construed to invalidate any patent that may 
have been granted under the authority of the said 
act; and all patentees under the said act, their 
executors, administrators, and assigns, shall be 
considered within the purview of this act, in 
respect to the violation of their rights; provided, 
such violations shall be committed after the pass- 
ing of this act. 

Approved February 21, 1793. 



CHAP. LVIII. — An Act supplementary to the act entitled 
<Obsolele.) up^^ p^^^ [^ promote the progress of useful arts." 

Suits &c -^^ ^^ enacted by the Senate and House of Rep- 

certain'^"act '>^^^^'>^tatices of the United States of America in 

revived. Congress assembled, That all suits, actions, process 

and proceedings, heretofore had in any district 

, , ^_ . court of the United States, under an act passed 

Act of Feb. ' c 

21, 1793, cii. the tenth day of April, in the year one thousand 
Aetof April seven hundred and ninety, entituled "An Act to 

10, 1790, ch. ^ ^, f f 1 X » u • u 

7. promote the progress of useful arts," which may 



RELATING TO PATENTS, ETC. 265 

have been set aside, suspended or abated, by- 
reason of! the repeal of the said act, may be re- 
stored, at the instance of the plaintiff or defendant, 
within one year from and after the passing of this 
act, in the said courts, to the same situation in 
which they may have been when they were so 
set aside, suspended, or abated ; and that the 
parties to the said suits, actions, process or proceed- 
ings, be and are hereby entitled to proceed in such 
cases as if no such repeal of the act aforesaid had 
taken place. Provided always, That before any In what 
order or proceeding, other than that for continuing 
the same suits, after the reinstating thereof, shall 
be entered or had, the defendant or plaintiff, as 
the case may be, against whom the same may 
«have been reinstated, shall be brought into court 
by summons, attachment, or such other proceed- 
ing as is used in other cases for compelling the 
appearance of a party. 
Approved June 7, 1794. 



CHAP. XXV. — An Act to extend the privilege of obtain- 
ing patents for useful discoveries and inventions, to certain (Repealed ) 
persons therein mentioned, and to enlarge and define the 
penalties for violating the rights of patentees. 

Section 1. Be it enacted hy the Senate and Aliens hav- 
House of Representatives of the United States of two yeara 
America in Congress assembled, That all and sin- ulsmes.en- 
gular the rights and privileges given, intended or benest'^oftha 
provided, to citizens of the United States, respect- ^"^"^^ ^f p^j, 
ing patents for new inventions, discoveries and 21, 1793, ch. 
improvements, by the actentituied "An Act to pro- 
mote the progress of useful arts, and to repeal the 
act heretofore made for that purpose," shall be 
and hereby are extended and given to all aliens 
who, at the time of petitioning in the manner 
23 



ZDb' LAWS OF THE UNITED STATES 

prescribed by the said act, shall have resided for 
two years within the United States, which privi- 
leges shall be obtained, used, and enjoyed by such 
persons, in as full and ample manner, and under 
the same conditions, limitations, and restrictions, 
as by the said act is provided and directed in the 
Oath to be case of citizens of the United States. Provided 

taken "^^ 7 mi . . . ^ 

Buch resi- always, 1 hat every person petitionmg for a patent 

the ' inveiv for any invention, art, or discovery, pursuant to 

covery hath this act, shall make oath or affirmation, before 

used. ^^^ some person duly authorized to administer oaths, 

before such patent shall be granted, that sucti 

invention, art, or discovery, hath not, to the best 

of his or her knowledge or belief, been known or 

used either in this or any foreign country, and 

that every patent which shall be obtained pursuant" 

to this act, for any invention, art or discovery, 

which it shall afterwards appear had been known 

or used previous to such application for a patent, 

shall be utterly void. 

The legal Sec. 2. And be it further enacted, That where 

lives of a (le- any person hath made, or shall have made, any 

ceased invert- . . ,. 

tor may oh- new invention, discovery or improvement, on 
ainapaten . ^^^^^yj^j. ^f -^yi-jjch a patent might, by virtue of this 
or the above-mentioned act, be granted to such 
person, and shall die before any patent shall be 
granted therefor, the right of applying for and 
obtaining such patent shall devolve on the legal 
representatives of such person in trust for the 
heirs at law of the deceased, in case he shall 
have died intestate ; but if otherwise, then in 
trust for his devisees, in as full and ample man- 
ner, and under the same conditions, limitations 
and restrictions, as the same was held or might 
have been claimed or enjoyed by such person, in 
his or her lifetime ; and when application for a 



RELATING TO PATENTS, ETC. 267 

patent shall be made by such legal representa- 
tives, the oath or affirmation, provided in the third 
section of the before-mentioned act; shall be so 
varied as to be applicable to them. 

Sec. 3. And be it further eiiacted, That where Damages for 

breach of pa- 

any patent shall be or shall have been granted tem right. 
pursuant to this or the above-mentioned act, and 
any person, without the consent of the patentee, 
his or her executors, administrators or assigns, 
first obtained in writing, shall make, devise, use, 
or sell the thing whereof the exclusive right is 
secured to the said patentee by such patent, such 
person so offending shall forfeit and pay to the 
said patentee, his executors, administrators or 
assigns, a sum equal to three times the actual 
damage sustained by such patentee, his executors, 
administrators or assigns, from or by reason of 
such offence, which sum shall and may be recov- To be re- 
ared by action on the case, founded on this and action^ on the 
the above-mentioned act, in the circuit court of cfrc^uitcourt? 
the United States having jurisdiction thereof. 

Sec. 4. And be it further enacted, That the Repeal of 
fifth section of the above-mentioned act, entitled ftfrmer°act.''^ 
"An Act to promote the progress of useful arts, „,^" °^,^^^ 
and to repeal the act heretofore made for that H- 
purpose," shall be and hereby is repealed. 

Approved April 17, 1800. 



CHAP. XIX. — An Act to extend the jurisdiction of the cir- 
cuit courts of the United States to cases arising under the 
law relating to patents. The circuit 

" . courts to 

Be it enacted by the Senate and House of Rep- have original 

... r 1 TT • 1 c^ /-A ■ ■ cognizance 

resentatives oj the United States of America in inequity and 
Congress assembled, That the circuit courts of the controversies 
United States shall have original cognizance, as [he^rVht^to 
well in equity as at law, of all actions, suits, con- Inrwritings. 



268 LAWS OF THE UNITED STATES 



Act of Feb. troversies, and cases, arising under any law of 

11 



21, 1793, ch. j.]^g United States, granting or confirming to 



Act of May authors or inventors the exclusive right to their 
II, 1790, ch. . . . . . ^. 

5. respective writings, inventions, and discoveries; 

and upon any bill in equity, filed by any party 
aggrieved in any such cases, shall have authority 
to grant injunctions, according to the course and 
principles of courts of equity, to prevent the vio- 
lation of the rights of any authors or inventors, 
secured to them by any laws of the United States, 
on such terms and conditions as the said courts 
Proviso, ^^y deem fit and reasonable : Provided, however, 
That from all judgments and decrees of any 
circuit courts, rendered in the premises, a writ of 
error or appeal, as the case may require, shall lie 
to the Supreme Court of the United States, in 
the same manner, and under the same circum- 
stances, as is now provided by law in other judg- 
ments and decrees of such circuit courts. 
Approved February 15, 1319. 



CHAP. CLXII. — An Act concerning patents for useful 
inventions. 

Section 1. Be it enacted by the Senate and 
4, id36, ch. House of Represejitatives of the United States of 
America in Congress assembled, That it shall be 
the duty of the Secretary of State, annually, in 
the month of January, to report to Congress, and 
to publish in two of the newspapers printed in 
List of ex- the city of Washington, a list of all the patents 
lo'^be annua?- ^01" discoveries, inventions and improvements, 
CoQ|r°es3^.''^" which shall have expired within the year imme- 
diately preceding, with the names of the pa- 
tentees, alphabetically arranged. 

Sec. 2. And be it further enacted, That appli- 
cation to Congress to prolong or renew the term 



RELATING TO PATENTS, ETC, 269 

of a patent shall be made before its expiration, apniicaiion'^ 
and shall be notified at least once a month, for J.g,P'J^'°"^p°! 
three months before its presentation, in two news- ^em. 
papers printed in the city of Washington, and in 
one of the newspapers in which the laws of the 
United States shall be published in the State or 
territory in which the patentee shall reside. The 
petition shall set forth particularly the grounds 
of the application. It shall be verified by oath; 
the evidence in its support may be taken before 
any judge or justice of the peace ; it shall be 
accompanied by a statement of the ascertained 
value of the discovery, invention, or improve- 
ment, and of the receipts and expenditures of the 
patentee, so as to exhibit the profit or loss arising 
therefrom. 

Sec. 3. And be it further enacted, That Patent to 
wherever any patent which has been heretofore, cLe^^of ilT- 
or shall be hereafter, granted to any inventor in havln? com- 
pursuance of the act of Congress, entitled "An \ll^^ lems** 
Act to promote the progress of useful arts, and to *^'^- 
repeal the act heretofore made for that purpose," 
passed on the twenty-first day of February, in 
the year of our Lord, one thousand seven hun- i793,ch. u. 
dred and ninety-three, or of any of the acts sup- 
plementary thereto, shall be invalid or inopera- 
tive, by reason that any of the terms or conditions 
prescribed in the third section of the said first 
mentioned act have not, by inadvertence, acci- 
dent, or mistake, and without any fraudulent or 
deceptive intention, been complied with on the 
part of the said inventor, it shall be lawful for 
the Secretary of State, upon the surrender to Secretary of 
him of such patent, to cause a new patent to be surrende"r|'°'^ 
granted to the said inventor for the same inven- a'^'new^'^pa- 
tion for the residue of the period then unexpired, ^^^^' 
23*= 



270 LAWS OF THE UNITED STATES 

for which the original patent was granted, upon 

his compliance with the terms and conditions 

prescribed in the said third section of the said act. 

In case of And, in case of his death, or any assignment bv 

death, &c., ' J & . 

right to vest him made of the same patent, the like right 

in executors, • i • i i • • 

&c. shall vest in his executors and administrators, or 

Proviso, assignee or assignees ; Provided, however, That 
such new patent so granted shall, in all respects, 
be liable to the same matters of objection and 
defence as any original patent granted under the 
said first-mentioned act. But no public use or 
privilege of the invention so patented, derived 
from or after the grant of the original patent, 
either under any special license of the inventor, 
or without the consent of the patentee that there 
shall be a free public use thereof, shall, in any 
manner, prejudice his right of recovery for any 
use or violation of his invention after the grant 
of such new patent as aforesaid. 
Apjjroved July 3, 1832. 



The privi- 



CHAP. CCIII. — An Act concerning the issuing of 
Patents to aliens, for useful discoveries and inventions. 

Be it enacted by the Senate and House of Rep- 
resentatives of the United States of America in 
Congress assembled, That the privileges granted 
legVs'granied to the aliens described in the first section of the 
tended. act, to extend the privilege of obtaining patents 

for useful discoveries and inventions to certain 
persons therein mentioned, and to enlarge and 
define the penalties for violating the rights of 
Act of April patentees, approved April seventeenth, eighteen 

17, 1800, ch. t J , , , J J • ri 

25. hundred, be extended, m like manner, to every 

alien, who, at the time of petitioning for a patent, 
shall be resident in the United States, and shall 



RELATING TO PATENTS, ETC. 271- 

have declared his intention, according to law, to 
become a citizen thereof ; Provided, That every Proviso, 
patent granted by virtue of this act, and the 
privileges thereto appertaining, shall cease and 
determine and become absolutely void, without 
resort to any legal process to annul or cancel the 
same, in case of a failure on the part of any pa- 
tentee, for the space of one year from the issuing 
thereof, to introduce into public use in the United 
States the invention or improvement for which 
the patent shall be issued, or in case the same for 
any period of six months after such introduction 
shall not continue to be publicly used and applied 
in the United States, or in case of failure to 
become a citizen of the United States, agreeably 
to notice given at the earliest period within which 
he shall be entitled to become a citizen of the 
United States. 

Approved July 13, 1832. 



CHAP. CCCLVII. — An Act to promote the progress igg^^^^^g^' 
of the useful arts, and to repeal all acts and parts of 
acts heretofore made for that purpose. 

Section 1. Be it enacted by the S>enate and 
House of Representatives of the United States of 
America in Congress assembled, That there shall 
be established and attached to the Department of 
State an office to be denominated the Patent 
Office, the chief officer of which shall be called 

• • p r, • T 1 Commis- 

the Commissioner of Patents, to be appointed by sionerof Pa- 
the President, by and with the advice and con- appointed, 
sent of the Senate, whose duty it shall be, under ties. 
the direction of the Secretary of State, to super- i8^"|'Jf 2II' 
intend, execute, and perform all such acts and 
things touching and respecting the granting and 
issuing of patents for new and useful discoveries, 



272 LAWS OF THE UNITED STATES 

inventions, and improvements, as are herein pro- 
vided for, or shall hereafter be, by law, directed 
to be done and performed, and shall have the 
charge and custody of all the hooks, records, 
papers, models, machines, and all other things 
belonging to said office. And said Commissioner 
shall receive the same compensation as is allowed 
by law to the Commissioner of the Indian Depart- 
ment, and shall be entitled to send and receive 
letters and packages by mail, relating to the busi- 
ness of the office, free of postage. 
Chief clerk. Sec. 2. And be it further enacted, That there 
shall be in said office an inferior officer, to be 
appointed by the said principal officer, with the 
approval of the Secretary of State, to receive an 
annual salary of seventeen hundred dollars, and 
to be called the chief clerk of the Patent Office, 
who, in all cases during the necessary absence of 
the Commissioner, or when the said principal 
office shall become vacant, shall have the charge 
and custody of the seal, and of the records, books, 
papers, machines, models, and all other things, 
belonging to the said office, and shall perform the 
duties of Commissioner during such vacancy. 
Examining And the Said Commissioner may also, with like 
oiher'officers. approval, appoint an examining clerk, at an 
annual salary of fifteen hundred dollars ; two 
other clerks, at twelve hundred dollars each, one 
of whom shall be a competent draughtsman ; one 
other clerk, at one thousand dollars ; a machinist, 
at twelve hundred and fifty dollars ; and a mes- 
senger, at seven hundred dollars. And said 
Commissioner, clerks, and every other person 
appointed and employed in said office, shall be 
disqualified and interdicted from acquiring or 
taking, except by inheritance, during the period 



RELATING TO PATENTS, ETC. 273 

for which they shall hold their appointments, 
respectively, for any right or interest, directly or 
indirectly, in any patent for an invention or dis- 
covery which has been, or may hereafter be, 
granted. 

Sec. 3. And be it further enacted, That the Officers to 

■^ make oath, 

said principal officer, and every other person to &c. 
be appointed in the said office, shall, before he 
enters upon the duties of his office or appoint- 
ment, make oath or affirmation truly and faith- 
fully to execute the trust committed to him. 
And the said Commissioner and the chief clerk 
shall also, before entering upon their duties, sev- 
erally give bonds, with sureties, to the Treasurer 
of the United States, the former in the sum of 
ten thousand dollars, and the latter in the sum of 
five thousand dollars, with condition to render a 
true and faithful account to him or his successor 
in office, quarterly, of all moneys which shall be 
by them respectively received for duties on pa- 
tents, and for copies of records and drawings, and 
all other moneys received by virtue of said office. 

Sec. 4. And be it further enacted, That the A seal to be 
said Commissioner shall cause a seal to be made 
and provided for the said office, with such device 
as the President of the United States shall 
approve; and copies of any records, books, 
papers, or drawings, belonging to the said office, 
under the signature of the said Commissioner, or, 
when the office shall be vacant, under the signa- 
ture of the chief clerk, with the said seal affixed, 
shall be competent evidence in all cases in which 
the original records, books, papers, or drawing, 
could be evidence. And any person making 
application therefor may have certified copies of 
the records, drawings, and other papers deposited 



274 LAWS OF THE UNITED STATES 

in said office, on paying, for the written copies, 
the sum of ten cents for every page of one hun- 
dred words ; and for copies of drawings, the rea 
sonable expense of making the same. 
Patents to Sec. 5. And be it further enacted. That all 

be signed by 

the Secretary patents issued from said office shall be issued in 
by the Coin- the name of the United States, and under the 
seal of said office, and be signed by the Secretary 
of State, and counter-signed by the Commissioner 
of the said office, and shall be recorded, together 
with the descriptions, specifications, and drawings, 
in the said office, in books to be kept for that 
purpose. Every such patent shall contain a short 
description or title of the invention or discovery, 
correctly indicating its nature and design, and in 
its terms grant to the applicant or applicants, his 
or their heirs, administrators, executors, or assigns, 
for a term not exceeding fourteen years, the full 
and exclusive right and liberty of making, using, 
and vending to others to be used, the said inven- 
tion or discovery, referring to the specifications 
for the particulars thereof, a copy of which shall 
be annexed to the patent, specifying what the 
patentee claims as his invention or discovery. 
Appiica- Sec. 6. And he it further enacted, That any 

tions, how *' _ •' 

made. person or persons having discovered or invented 

any new and useful art, machine, manufacture, 
or composition of matter, or any new and useful 
improvements on any art, machine, manufacture, 
or composition of matter, not known or used by 
others before his or their discovery or invention 
thereof, and not, at the time of his application for 
a patent, in public use or on sale, with his con- 
sent or allowance, as the inventor or discoverer, 
and shall desire to obtain an exclusive property 
therein, may make application in writing to the 



RELATING TO PATENTS, ETC. 275 

Commissioner of Patents, expressing such desire, 
and the Commissioner, on due proceed ings had, 
may grant a patent therefor. But before any .Specifica- 
inventor shall receive a patent for any such nev^'' 
invention or discovery, he shall deliver a written 
description of his invention or discovery, and of 
the manner and process of making, constructing, 
using, and compounding the same, in such full, 
clear, and exact terms, avoiding unnecessary pro- 
lixity, as to enable any person skilled in the art 
or science to which it appertains, or with which it 
is most nearly connected, to make, construct, com- 
pound and use the same; and, in case of any 
machine, he shall fully explain the principle, and 
the several modes in which he has contemplated 
the application of that principle or character by 
which it may be distinguished from other inven- 
tions ; and shall particularly specify and point out 
the part, improvement, or combination, which he 
claims as his own invention or discovery. He 
shall, furthermore, accompany the whole with a 
drawing or drawings, and written references, 
where the nature of the case admits of drawings ; Drawings, 
or with specimens of ingredients, and of the com- 
position of matter, sufficient in quantity for the 
purpose of experiment, where the invention or 
discovery is of a composition of matter; which 
descriptions and drawings, signed by the inventor, 
and attested by two witnesses, shall be filed in Models. 
the Patent Office ; and he shall, moreover, furnish 
a model of his invention, in all cases which admit 
of a representation by model, of a convenient size 
to exhibit advantageously its several parts. The 
applicant shall also make oath, or affirmation, that Oath or af- 
he does verily believe that he is the original and 
first inventor or discoverer of the art, machine, 



276 LAWS OF THE UNITED STATES 

composition, or improvement, for which he solicits 
a patent ; and that he does not know or believe 
that the same was ever before known or used ; 
and also of what country he is a citizen ; which 
oath or afRrmation may be made before any per- 
son authorized by law to administer oaths. 
Exartiina- Sec. 7. And be it further enacted, That, on 



lion 



veniion to the filing of any such application, description, 

be made, and , . „ . , , c i i 

proceedings and specification, and the payment oi the duty 
should i't not hereinafter provided, the Commissioner shall make, 
new. ^^""^ or cause to be made, an examination of the alleged 
new invention or discovery; and if, on any such 
examination, it shall not appear to the Commis- 
sioner that the same had been invented or discov- 
ered by any other person in this country, prior to 
the alleged invention or discovery thereof by the 
applicant, or that it had been patented or described 
in any printed publication in this or any foreign 
country, or had been in public use or on sale, with 
the applicant's consent or allowance, prior to the 
application, if the Commissioner shall deem it to 
be sufficiently useful and important, it shall be his 
duty to issue a patent therefor. But whenever, 
on such examination, it shall appear to the Com- 
missioner that the applicant was not the original 
and first inventor or discoverer thereof, or that 
any part of that which is claimed as new had 
before been invented or discovered, or patented, 
or described in any printed publication in this or 
any foreign country as aforesaid, or that the de- 
scription is defective and insufficient, he shall 
notify the applicant thereof, giving him briefly 
such information and references as may be useful 
in judging of the propriety of renewing his appli- 
cation, or of altering his specification to embrace 
only that part of the invention or discovery which 



RELATING TO PATENTS, ETC. 277 

is new. In every such case, if the applicant shall 
elect to withdraw his application, relinquishing 
his claim to the model, he shall be entitled to 
receive back twenty dollars, part of the duty 
required by this act, on filing a notice in writing 
of such election in the Patent Office ; a copy of 
which, certified by the Commissioner, shall be a 
sufficient warrant to the treasurer for paying back 
to the said applicant the said sum of twenty dol- 
lars. But if the applicant, in such case, shall per- 
sist in his claims for a patent, with or without any 
alteration of his specification, he shall be required 
to make oath or affirmation anew, in manner as 
aforesaid ; and if the specification and claim shall 
not have been so modified as, in the opinion of 
the Commissioner, shall entitle the applicant to a 
patent, he may, on appeal, and upon request in 
writing, have the decision of a board of examin- 
ers, to be composed of three disinterested persons, 
who shall be appointed for that purpose by the 
Secretary of State, one of whom, at least, to be 
selected, if practicable and convenient, for his 
knowledge and skill in the particular art, manu- 
facture, or branch of science, to which the alleged 
invention appertains ; who shall be under oath or 
affirmation for the faithful and impartial perform- 
ance of the duty imposed upon them by said 
appointment. Said board shall be furnished with 
a certificate in writing of the opinion and decis- 
ion of the Commissioner, stating the particular 
grounds of his objection, and the part or parts of 
the invention which he considers as not entitled 
to be patented. And the said board shall give 
reasonable notice to the applicant, as well as to 
the Commissioner, of the time and place of their 
meeting, that they may have an opportunity of 
24 



278 LAWS OF THE UNITED STATES 

furnishing them with such facts and evidence as 
they may deem necessary to a just decision ; and 
it shall be the duty of the Commissioner to furnish 
to the board of examiners such information as he 
may possess relative to the matter under their 
consideration. And on an examination and con- 
sideration of the matter by such board, it shall be 
in their power, or of a majority of them, to reverse 
the decision of the Commissioner, either in whole 
or in part; and their opinion being certified to the 
Commissioner, he shall be governed thereby in 
the further proceedings to be had on such appli- 

Proviso, cation : Provided, hoioever, That, before a board 
shall be instituted in any such case, the applicant 
shall pay to the credit of the treasury, as provided 
in the ninth section of this act, the sum of twenty- 
five dollars ; and each of said persons so appointed 
shall be entitled to receive, for his services, in 
each case, a sum not exceeding ten dollars, to be 
determined and paid by the Commissioner out of 
any moneys in his hands, which shall be in full 
compensation to the persons who may be so ap- 
pointed, for their examination and certificate as 
aforesaid. 

Interfering Sec. 8. And be it further enacted, That when- 
ever an application shall be made for a patent, 
which, in the opinion of the Commissioner, would 
interfere with any other patent for which an appli- 
cation may be pending, or with any unexpired 
patent which shall have been granted, it shall be 
the duty of the Commissioner to give notice 
thereof to such applicants, or patentees, as the 
case may be; and if either shall be dissatisfied 
with the decision of the Commissioner on the 
question of priorijy of right or invention, on a 
hearing thereof, he may appeal from such decis- 



RELATING TO PATENTS, ETC, 279 

ion, on the like terms and conditions as are pro- 
vided in the preceding section of this act, and the 
like proceedings shall be had to determine which, 
or whether either, of the applicants is entitled to 
receire a patent as prayed for. But nothing in 
this act contained shall be construed to deprive 
an original and true inventor of the right to a 
patent for his invention, by reason of his having 
previously taken out letters-patent therefor in a 
foreign country, and the same having been pub- 
lished, at any time within six months next pre- 
ceding the filing of his specification and drawings. 
And whenever the applicant shall request it, the 
patent shall take date from the time of filing of 
the specifications and drawings, not, however, 
exceeding six months prior to the actual issuing 
of the patent ; and on like request, and the pay- 
ment of the duty herein required, by any appli- 
cant, his specification and drawings shall be filed 
in the secret archives of the office, until he shall 
furnish the model, and the patent be issued, not 
exceeding the term of one year, the applicant 
being entitled to notice of interfering applications. 

Sec. 9. And be it further enacted, That before Thinydoi. 
any application for a patent shall be considered jf^Td lo the 
by the Commissioner as aforesaid, the applicant u.^'sla°L^^^ 
shall pay into the treasury of the United States, ^'"^^f;"/^^^ ^7 
or into the Patent Office, or into any of the '^'^• 
deposit banks, to the credit of the treasury, if he 
be a citizen in the United States, or an alien, and 
shall have been resident in the United States for 
one year next preceding, and shall have made 
oath of his intention to become a citizen thereof, 
the sum of thirty dollars ; if a subject of the King d^fd^ dollars 
of Great Britain, the sum of five hundred dollars; by a subjea 

of G. Briiain, 

and all other persons the sum of three hundred and ihree 



280 LAWS OF THE UNITED STATES 

hundred by dollars; for which payment duplicate receipts 
sons. shall be taken, one of which to be filed in the 

office of the treasurer. And the moneys received 
into the treasury under this act shall constitute a 
fund for the payment of the salaries of the officers 
and clerks herein provided for, and all other ex- 
penses of the Patent Office, and to be called the 
patent fund. 
Inventors Sec.10. And be U further enacted, Thd.t'wh.exe 
oui"faking a any person hath made, or shall have made, any 

patent, their 
executors, 



new invention, discovery, or improvement, on 



^g • - ■ account of which a patent might by virtue of th 



&c., may, 
&c. 

act be granted, and such person shall die, before 
any patent shall be granted therefor, the right of 
applying for and obtaining such patent shall de- 
volve on the executor or administrator of such 
person, in trust for the heirs-at-law of the de- 
ceased, in case he shall have died intestate ; but 
if otherwise, then in trust for his devisees, in as 
full and ample manner, and under the same con- 
ditions, limitations, and restrictions, as the same 
was held, or might have been claimed or enjoyed 
by such person in his or her lifetime ; and when 
application for a patent shall be made by such 
legal representatives, the oath or affirmation pro- 
vided in the sixth section of this act shall be so 
varied as to be applicable to them. 
Assignment Sec. 11. And be it further enacted, That every 

of a patent, ■ •' 

and record patent Shall be assignable in law, either as to the 

thereof. ^ ° 

whole interest, or any undivided part thereof, by 
any instrument in writing; which assignment, 
and also every grant and conveyance of the 
exclusive right under any patent, to make and 
use, and to grant to others to make and use, the 
thing patented within and throughout any speci- 
fied part or portion of the United States, shall be 



RELATING TO PATENTS, ETC. 281 

recorded in the Patent Office within three months 
from the execution thereof, for which the assignee 
or grantee shall pay to the Commissioner the 
sum of three dollars. 

Sec. 12. And he it further enacted^ That any Caveat may 

p I TT • 1 o 1 • . 1 I'l 't'6 entered. 

Citizen of the United States, or alien, who shall 
have been a resident of the United States one 
year next preceding, and shall have made oath of 
his intention to become a citizen thereof, who 
shall have invented any new art, machine, or 
improvement thereof, and shall desire further time 
to mature the same, may, on paying to the credit 
of the treasury, in manner as provided in the 
ninth section of this act, the sum of twenty dol- 
lars, file in the Patent Office a caveat setting 
forth the design and purpose thereof, and its prin- 
cipal and distinguishing characteristics, and pray- 
ing protection of his right, till he shall have 
matured his invention; which sum of twenty dol- 
lars, in case the person filing such caveat shall 
afterwards take out a patent for the invention 
therein mentioned, shall be considered a part of 
the sum herein required for the same. And such 
caveat shall be filed in the confidential archives 
of the office, and preserved in secrecy. And if 
application shall be made by any other person, 
within one year from the time of filing such 
caveat, for a patent of any invention with which 
it may in any respect interfere, it shall be the 
duty of the Commissioner to deposit the descrip- 
tion, specifications, drawings, and model, in the 
confidential archives of the office, and to give 
notice (by mail) to the person filing the caveat of 
such application, who shall, within three months 
after receiving the notice, if he would avail him- 
self of the benefit of his caveat, file his description, 
24* 



282 LAWS OF THE UNITED STATES 

specification, drawings, and model ; and if, in the 
opinion of the Commissioner, the specifications of 
claim interfere with each other, like preceedings 
may be had in all respects as are in this act pro- 
vided in the case of interfering applications. Pro- 
Proviso, vided, however. That no opinion or decision of any 
board of examiners, under the provisions of this 
act, shall preclude any person interested in favor 
of or against the validity of any patent which has 
been or may hereafter be granted, from the right 
to contest the same in any judicial court, in any 
action in which its validity may Come in question. 
vaTid'fmm" ^^^- 1^- -^^^ *^ ^'^ further enacted, That 
defective vvhenever any patent, which has heretofore been 
tions may be grranted, or which shall hereafter be granted, 

surreiidered, = _ d ' 

and new pa- shall be inoperative or invalid, by reason of a 

tenls may be ■" . •' _ 

issued ill cer- defective or insufficient description or specifica- 

tain cases. . ,...,. 

tion, or by reason ot the patentee claiming, in his 
specification, as his own invention, more than he 
had or shall have a right to claim as new, if the 
error has or shall have arisen by inadvertency, 
accident, or mistake, and without any fraudulent 
or deceptive intention, it shall be lawful for the 
Commissioner, upon the surrender to him of such 
patent, and the payment of the further duty of 
fifteen dollars, to cause a new patent to be issued 
to the said inventor for the same invention, for 
the residue of the period then unexpired, for 
which the original patent was granted, in accord- 
ance with the patentee's corrected description and 
specification. And in case of his death, or any 
assignment by him made of the original patent, a 
similar right shall vest in his executors, adminis- 
trators, or assignees. And the patent so reissued, 
together with the corrected description and specifi- 
cations, shall have the same efTect and operation 



RELATING TO PATENTS, ETC. 283 

in law, on the trial of all actions hereafter com- 
menced for causes subsequently accruing, as 
though the same had been originally filed in such 
corrected form, before the issuing of the original 
patent. And whenever the original patentee Patentee 
shall be desirous of adding the description and SdUin"t to 
specification of any new improvement of the '^'^ p^'^"'- 
original invention or discovery, which shall have 
been invented or discovered by him subsequent to 
the date of his patent, he may, like proceedings 
being had in all respects as in the case of orig- 
inal applications, and on the payment of fifteen 
dollars, as hereinbefore provided, have the same 
annexed to the original description and specifica- 
tion ; and the Commissioner shall certify, on the 
margin of such annexed description and specifica- 
tion, the time of its being annexed and recorded; 
and the same shall thereafter have the same 
effect in law, to all intents and purposes, as 
though it had heen embraced in the original 
description and specification. 

Sec. 14. Aoid be it further enacted, That Courts may 
whenever, in any action for damages [for] ment "^ fir °a 
making, using, or selling the thing whereof the ceSiugihrea 
exclusive right is secured by any patent hereto- amoum'^'^of 
fore granted, or by any patent which may here- ^^^g^^ '^^°*" 
after be granted, a verdict shall be rendered for 
the plaintiff in such action, it shall be in the 
power of the court to render judgment of any 
sum above the amount found by such verdict as 
the actual damages sustained by the plaintiff, not 
exceeding three times the amount thereof, 
according to the circumstances of the case, with 
costs ; and such damages may be recovered by 
action on the case, in any court of competent 
jurisdiction, to be brought in the name or names 



2S4 LAWS OF THE UNITED STATES 

of the person or persons interested, whether as 
patentee, assignees, or as grantees of the exclusive 
right within and throughout a specified part of 
the United States. 
Defendant §£0. 15. And be U further enacted, That the 

may plead -' _ 

the general defendant in anv such action shall be permitted 

issue, «c. "^ '■ 

to plead the general issue, and to give this act 
and any special matter in evidence, of which 
notice in writing may have been given to the 
plaintiff or his attorney, thirty days before trial, 
tending to prove that the description and specifi- 
cation filed by the plaintiff does not contain the 
whole truth relative to his invention or dis- 
covery, or that it contains more than is necessary 
to produce the described effect ; which conceal- 
ment or addition shall fully appear to have been 
made for the purpose of deceiving the public, or 
that the patentee was not the original and first 
inventor or discoverer of the thing patented, or 
of a substantial and material part thereof, claimed 
as new, or that it had been described in some 
public work anterior to the supposed discovery 
thereof by the patentee, or had been in public use 
or on sale with the consent and allowance of the 
patentee before his application for a patent, or 
that he had surreptitiously or unjustly obtained the 
patent for that which was in fact invented or dis- 
covered by another, who was using reasonable 
diligence in adapting and perfecting the same ; 
or that the patentee, if an alien at the time the 
patent was granted, had failed and neglected, for 
the space of eighteen months from the date of 
the patent, to put and continue on sale to the 
public, on reasonable terms, the invention or dis- 
covery for which the patent issued ; and when" 
ever the defendant relies in his defence on the 



RELATING TO PATENTS, ETC. 



285 



fact of a previous invention, knowledge, or use 
of the thing patented, he shall state, in his notice 
of special matter, the nannes and places of resi- 
dence of those whom he intends to prove to have 
possessed a prior knowledge of the thing and 
where the same had been used ; in either of 
which cases, judgment shall be rendered for the 
defendant, with costs ; Provided, however, That 
whenever it shall satisfactorily appear that the 
patentee, at the time of making his application 
for the patent, believed himself to be the first 
inventor or discoverer of the thing patented, the 
same shall not be void on account of the inven- 
tion or discovery, or any part thereof, having 
been known or used in any foreign country ; it 
not appearing that the same, or any substan- 
tial part thereof, had before been patented or 
described in any printed publication ; And pro- 
vided, also, That whenever the plaintiff shall fail 
to sustain his action on the ground that in his 
specification or claim is embraced more than that 
of which he was the first inventor, if it shall 
appear that the defendant had used or violated 
any part of the invention justly and truly speci- 
fied and claimed as new, it shall be in the povver 
of the court to adjudge and award, as to costs as 
may appear to be just and equitable. 

Sec. 16. And be it further enacted. That 
whenever there shall be two interfering patents, 
or whenever a patent or application shall have 
been refused on an adverse decision of a board 
of examiners, on the ground that the patent 
applied for would interfere with an unexpired 
patent previously granted, any person interested 
in any such patent either by assignment or other- 
wise in the one case, and any such applicant in the 



Interfering 
patents, &c. 



286 LAWS OF THE UNITED STATES 

Other case, may have remedy by bill in equity; 
and the court having cognizance thereof, on 
■ notice to adverse parties, and other due proceed- 
ings had, may adjudge and declare either the 
patents void in the whole or in part, or inopera- 
tive and invalid in any particular part or portioii 
of the United States, according to the interest 
which the parties to such suit may possess in the 
patent or the inventions patented, and may also 
adjudge that such applicant is entitled, accord- 
ing to the principles and provisions of this act, 
to have and receive a patent for his invention, 
as specified in his claim, or for any part thereof, 
as the fact of priority of right or invention shall, 
in any such case, be made to appear. And such 
adjudication, if it be in favor of the right of such 
applicant, shall authorize the Commissioner to 
issue such patent on his filing a copy of the adju- 
dication, and otherwise complying with the 

Proviso, requisitions of this act: Provided, however, 
That no such judgment or adjudication shall 
affect the rights of any person, except the parties 
to the action, and those deriving title from or 
under them subsequent to the rendition of such 
judgment. 

Actions Sec. 17. And be it further enacted, That all 

cogaizable in . . . 

Circuit actions, suits, controversies, and cases arismg 

U. a, &c. under any lavv of the United States, granting or 
confirming to inventors the exclusive right to 
their inventions or discoveries, shall be originally 
cognizable, as well in equity as at law, by the 
circuit courts of the United States, or any dis- 
trict court having the powers and jurisdiction of 
a circuit court; which courts shall have power, 
upon a bill in equity filed by any party aggrieved, 
in any such case, to grant injunctions, according 



RELATING TO PATENTS, ETC. 287 

to the course and principles of courts of equity, 
to prevent the violation of the rights of any Proviso, 
inventor as secured to him by any law of the 
United States, on such terms and conditions as 
said courts may deem reasonable : Provided, how- 
ever, That from all judgments and decrees from 
any such court rendered in the premises, a writ 
of error or appeal, as the case may require, shall 
lie to the Supreme Court of the United States, 
in the same manner, and under the same circum- 
stances, as is now provided by law in other judg- 
ments and decrees of circuit courts, and in all 
other cases in which the court shall deem it rea- 
sonable to allow the same. 

Sec. 18. And be it fiirther enacted, That b^^^g'^Jg,^^ 
whenever any patentee of an invention or dis- ?even years 

•' ^_ , _ in certain 

covery shall desire an extension of his patent cases, 
beyond the term of its limitation, he may make 
application therefor, in writing, to the Commis- 
sioner of the Patent Office, setting forth the 
grounds thereof; and the Commissioner shall, on 
the applicant's paying the sum of forty dollars to 
the credit of the treasury, as in the case of an 
original application for a patent, cause to be pub- 
lished in one or more of the principal newspapers 
in the city of Washington, and in such other 
paper or papers as he may deem proper, pub- 
lished in the section of country most interested 
adversely to the extension of the patent, a notice 
of such application, and of the time and place 
■when tind where the same will be considered, 
that any person may appear and show cause why 
the extension should not be granted. And the 
Secretary of State, the Commissioner of the 
Patent Office, and the Solicitor of the Treasury, 
shall constitute a board to hear and decide upon 



288 LAWS OF THE UNITED STATES 

the evidence produced before them, both for and 
against the extension, and shall sit for that pur- 
pose at the time and place designated in the pub- 
' lished notice thereof. The patentee shall furnish 

to said board a statement, in writing, under oath, 
of the ascertained value of the invention, and of 
his receipts and expenditures, sufficiently in 
detail to exhibit a true and faithful account of 
loss and profit in any manner accruing to him 
from and by reason of said invention. And if, 
upon a hearing of the matter, it shall appear to 
the full and entire satisfaction of said board, 
having due regard to the public interest therein, 
that it is just and proper that the term of the 
patent should be extended, by reason of the pa- 
tentee, without neglect or fault on his part, having 
failed to obtain, from the use and sale of his 
invention, a reasonable remuneration for the time, 
ingenuity, and expense bestowed upon the same, 
and the introduction thereof into use, it shall be 
the duty of the Commissioner to renew and 
extend the patent, by making a certificate thereon 
of such extension, for the term of seven years 
from and after the expiration of the first term ; 
which certificate, with a certificate of said board 
of their judgment and opinion as aforesaid, shall 
be entered on record in the Patent Office; and 
thereupon the said patent shall have the same 
effect in law as though it had been originally 
granted for the term of twenty-one years ; and 
the benefit of such renewal shall extend to 
assignees and grantees of the right to use the 
thing patented, to the extent of their respective 
Proviso, interests therein ; Provided, however, That no 
extension of a patent shall be granted after the 
expiration of the term for which it was originally 
issued. 



RELATING TO PATENTS, ETC. 289 

Sec. 19. And he it further enacted, That „ Library of 

•' ' Patent Of- 

there shall be provided, for the use of said office, fice. 
a library of scientific works and periodical publi- 
cations, both foreign and American, calculated to 
facilitate the discharge of the duties hereby- 
required of the chief officers therein, to be pur- 
chased under the direction of the Committee of 
the Library of Congress. And the sum of fif- 
teen hundred dollars is hereby appropriated for 
that purpose, to be paid out of the patent fund. 

Sec. 20. And be it further enacted, That it Models to 
shall be the duty of the Commissioner to cause ^^^^ ^^^^^j^^ifgj'^ 
to be classified and arranged in such rooms or 
galleries as may be provided for that purpose, in 
suitable cases, when necessary for their preserva- 
tion, and in such manner as shall be conducive 
to a beneficial and favorable display thereof, the 
models and specimens of compositions and of 
fabrics, and other manufactures and works of 
art, patented or unpatented, vi^hich have been, or 
shall hereafter be, deposited in said office. And 
said rooms or galleries shall be kept open during 
suitable hours for public inspection. 

Sec. 21. And be it further enacted, That all Formeracts 
acts and parts of acts heretofore passed on this ^^^^^^ ■ 
subject be, and the same are hereby, repealed: 
Provided, however, That all actions and pro- proviso, 
cesses in law or equity sued out prior to the pas- 
sage of this act, may be prosecuted to final judg- 
ment and execution, in the same manner as 
though this act had not been passed, excepting 
and saving the application to any such action of 
the provisions of the fourteenth and fifteenth 
sections of this act, so far as they may be appli- 
cable thereto : And provided, also. That all appli- proviso, 
cations for petitions for patents, pending at the 
25 



290 LAWS OF THE UNITED STATES 

time of the passage of this act, in cases where 
the duty has been paid, shall be proceeded with 
and acted on in the same manner as though filed 
after the passage thereof. 

JAMES K. POLK, 
Speaker of the House of Representatives. 
W. R. KING, 
President of the Senate, pro tern. 
Approved July 4, 1836. 

ANDREW JACKSON. 



CHAP. XLT. — An Act in addition to the act to promote 
Bued'and^as- ^^^ progress of science and useful arts. 

lifecured Ld ^^ ii enacted by the Senate and Hovse of Rep- 
or'^'to'^'sih^' T^sentatives of the United Stales of America, in 
?8a6"rnay'be ^^^o^^^^ assembled, That any person who may 
recorded bg iu possession of, or in any way interested in, 
any patent for an invention, discovery, or improve- 
ment, issued prior to the fifteenth day of Decem- 
ber, in the year of our Lord one thousand eight 
hundred and thirty-six, or in an assignment of 
any patent, or interest therein, executed and re 
corded prior to the said fifteenth day of Decen)ber, 
may, without charge, on presentation, or trans 
mission thereof, to the Commissioner of Patents 
have the same recorded anew in the Patent Office 
together with the descriptions, specifications of 
claim, and drawings annexed or belonging to the 
same; and it shall be the duty of the Commis- 
sioner to cause the same, or any authenticated 
copy of the original record, specification, or draw- 
ing, which he may obtain, to be transcribed and 
copied into books of record to be kept for that 
purpose ; and whenever a drawing was not origi- 
nally annexed to the patent and referred to in the 
specification, any drawing produced as a delinea- 



I 



RELATING TO PATENTS, ETC. 291 

tion of the invention, being verified by oath in 

such manner as the Commissioner shall require, 

may be transmitted and placed on file, or copied 

as aforesaid, together with certificate of the oath; 

or such drawings may be made in the office, under 

the direction of the Commissioner, in conformity 

with the specification. And it shall be the duty Measures 

of the Commissioner to take such measures as Joobwi'a pa^ 

may be advised and determined by the board of be"'r^cMded! 

Commissioners provided for in the fourth section *''^- 

of this act, to obtain the patents, specifications, 

and copies aforesaid, for the purpose of being so 

transcribed and recorded. And it shall be the 

duty of each of the several clerks of the iudicial ^ ^i^rksof 

•' _ *' the judicial 

courts of the United States to transmit, as soon courts of u. 

Slates to 

as may be, to the Commissioner of the Patent transmit 

rsrf r II 1 i • i ■ statements 

Oifice, a statement of all the authenticated copies of authenti- 

c , . . -r ■ 11 cated copiea 

01 patents, descriptions, specifications, and draw- of pateaia, 

„ . ^. J J. . J J &c., prior to 

mgs 01 inventions and discoveries, made and exe- i.5ih Decem- 
cuted prior to the aforesaid fifteenth day of ^ ' ' ' 
December, which may be found on the files of his 
office ; and also to make out and transmit to said 
Commissioner, for record as aforesaid, a certified 
copy of every such patent, description, specifica- 
tion, or drawing, which shall be specially required 
by said Commissioner. 

Sec. 2. A7id be it further e^iacted, That copies Certified 
of such record and drawings, certified by the such Record, 
Commissioner, or, in his absence, by the chief iden'ceinaay 
clerk, shall be prima facie evidence of the particu- if il' s. &cl^' 
lars- of the invention, and of the patent granted 
therefor in any judicial court of the United States, 
in all cases where copies of the original record or 
specification and drawings would be evidence, 
without proof of the loss of such originals; and 
no patent issued prior to the aforesaid fifteenth 



zya LAWS OF the united states 

No patent, day of December shall, after the first day of June 

&c., issusJ, , . . . . , . y , 

&.C.. prior to uext, be received in evidence in any of tiie said 

December 15, • i i if p i , 

18J6. 10 be courts in behaii of the patentee or other person 

received in , i n i • • r i i . 

evidence in vvho shall be in possession 01 the same, unless it 
after isUune shall have been so recorded anew, and a drawing 
refonied"^^^ of the invention, if separate from the patent, veri- 
^"^^" fied as aforesaid, deposited in the Patent Office ; 

nor shall any written assignment of any such 
patent, executed and recorded prior to the said 
fifteenth day of December, be received in evidence 
in any of the said courts in behalf of the assignee 
or other person in possession thereof, until it shall 
have been so recorded anew. 
New pa- ^^^- ^* ■^'"■^ ^^ it further enacted, That, when- 
issued "^"for^ ^^^^ ^^ shall appear to the Commissioner that any 
des^Ved' o"" P^^^^t was destroyed by the burning of the Patent 
or before De- Office building on the aforesaid fifteenth day of 

cember 15, ° •' _ 

1836. December, or was otherwise lost prior thereto, it 

shall be his duty, on application therefor by the 
patentee or other person interested therein, to 
issue a new patent for the same invention or dis- 
covery, bearing the date of the original patent, 
with his certificate thereon, that it was made and 
issued pursuant to the provisions of the third sec- 
tion of this act, and shall enter the same of record : 
Proviso. Provided, however. That before such patent shall 
be issued, the applicant therefor shall deposit in 
the Patent Office a duplicate, as near as may be, 
of the original model, drawings, and descriptions, 
with specifications of the invention or discovery, 
verified by oath, as shall be required by the Com- 
missioner; and such patent, and copies of such 
drawings and descriptions, duly certified, shall be 
admissible as evidence in any judicial court of 
the United States, and shall protect the rights of 
the patentee, his administrators, heirs, and assigns, 



KELATING TO PATENTS, ETC. 293 

to the extent only in which they would have been 
protected by the original patent and specification. 

Sec. 4. And be it further enacted, That it shall Duplicates 

•> ' . "f ceriam 

be the duty of the Commissioner to procure a dupli- models lo b© 

•' r r procured. 

cate of such of the models destroyed by fire on 
the aforesaid fifteenth day of December as were 
most valuable and interesting, and whose preserva- 
tion would be important to the public ; and such 
as would be necessary to facilitate the just dis- 
charge of the duties imposed by law on the Com- 
missioner in issuing patents, and to protect the 
rights of the public and of patentees in patented 
inventions and improvements : Provided, That a Proviso. 
duplicate of such models may be obtained at a 
reasonable expense : A?id provided, also, That the Furtherpro- 
whole amount of expenditure for this purpose 
shall not exceed the sum of one hundred thousand 
dollars. And there shall be a temporary board Atempora- 

r J ry board of 

of Commissioners, to be composed of the Commis- commission- 

ers to be 

sioner of the Patent Office and two other persons appointed; 

1 • 1 1 1 XI • 1 1 • I'heir duties. 

to be appomted by the rresident, whose duty it 
shall be to consider and determine upon the best 
and most judicious mode of obtaining models of 
suitable construction ; and, also, to consider and 
determine what models may be procured in pur- 
suance of, and in accordance with, the provisions 
and limitations in this section contained. And 
said Commissioners may make and establish all 
such regulations, terms, and conditions, not incon- 
sistent with law, as in their opinion may be proper 
and necessary to carry the provisions of this sec- 
tion into effect, according to its true intent. 

Sec. 5. Arid be it further enacted, That, when- Patents re- 

I 11 1 1 r- • 1 turned for 

ever a patent shall be returned for correction and correction, 

reissue, under the thirteenth section of the act to the isih sec- 

which this is additional, and the patentee shall acTw°which 
25* 



294 LAWS OF THE UNITED STATES 

this is addi- desire several patents to be issued for distinct and 
' " separate parts of the thing patented, he shall first 
pay, in manner and in addition to the sum pro- 
vided by that act, the sum of thirty dollars for 
Act of 1836, •' ' , . , r, 

ch. 357. each additional patent so to be issued : Provided, 

however, That no patent made prior to the afore- 
said fifteenth day of December shall be corrected 
and reissued until a duplicate of the model and 
drawing of the thing, as originally invented, veri- 
fied by oath as shall be required by the Commis- 
sioner, shall be deposited in the Patent Office. 

No addi- ^ 

tion, &c., to Nor shall any addition of an improvement be made 

be made to 

any patent to any patent heretofore granted, nor any new 

heretofore "' , . , . . ° . . 

granted, &c., patent be issued for an improvement made in any 
fieddupiicats machine, manufacture, or process, to the original 

model, (fee. ,13 • ^ • r X ^ iL 

deposited, mventor, assignee, or possessor, of a patent there- 
'^' for, nor any disclaimer be admitted to record, 

until a duplicate model and drawing of the thing 
originally invented, verified as aforesaid, shall 
have been deposited in the Patent Office, if the 
Commissioner shall require the same ; nor shall 
any patent be granted for an invention, improve- 
ment, or discovery, the model or drawing of which 
shall have been lost, until another model and 
drawing, if required by the Commissioner, shall, 
in like manner, be deposited in the Patent Office. 
And in all such cases, as well as in those which 

Compensa- . i , , ■ i . ,- i • , 

lion for mod- may arise under the third section of this act, the 
question of compensation for such models and 
drawing shall be subject to the judgment and 
decision of the Commissioners provided for in the 
fourth section, under the same limitations and 
restrictions as are therein prescribed. 
Patents here- ^^'^- 6. And be it further enacted, That any 
Bue^d "^^ '"^ '^ patent hereafter to be issued maybe made and 
issued to the assignee or assignees of the inventor 



RELATING TO PATENTS, ETC. 295 

or discoverer, the assignment thereof being first 
entered of record, and the application therefor 
being duly made, and the specification duly sworn 
to by the inventor. And in all cases hereafter, 
the applicant for a patent shall be held to furnish 
duplicate drawings, whenever the case admits of 
drawings, one of which to be deposited in the 
office, and the other to be annexed to the patent, 
and considered a part of the specification. 

Sec. 7. And be it further enacted, That when- Whenever 
ever any patentee shall have, through inadvert- shaii'through 
ence, accident, or mistake, made his specification &ct'/^'^rnake 
of claim too broad, claiming more than that of lion^^^oo*^^' 
which he was the original or first inventor, some he°^&'(;.^ ^a/ 
material and substantial part of the thing patented ^^^^j. ^^ 
being truly and justly his own, any such patentee, 
his administrators, executors, and assigns, whether 
of the whole or of a sectional interest therein, may 
make disclaimer of such parts of the thing pa- 
tented as the disclaimant shall not claim to hold 
by virtue of the patent or assignment, stating 
therein the extent of his interest in such patent ; 
which disclaimer shall be in writing, attested by 
one or more witnesses, and recorded in the Patent 
Office, on payment by the person disclaiming, in 
manner as other patent duties are required by law 
to be paid, of the sum of ten dollars. And such 
disclaimer shall thereafter be taken and consid- 
ered as part of the original specification, to the 
extent of the interest which shall be possessed in 
the .patent or right secured thereby, by the dis- 
claimant, and by those claiming by or under him, 
subsequent to the record thereof. But no such 
disclaimer shall affect any action pending at the 
time of its being filed, except so far as may relate 



LAWS OF THE UNITED STATES 



to the question of unreasonable neglect or delay 
in filing the same. 
Applications Sec. 8. And be it further enacted, ThaXvAiexi- 

for additions -^ 

to newly dis- ever application shall be made to the Commis- 



coven 



to exisinii 
patents, Sec. 



provements sioner for any addition of a newly discovered 

to be made . , , . , 

improvement to be made to any existmg patent, 
or whenever a patent shall be returned for correc- 
tion and reissue, the specification of claim annexed 
to every such patent shall be subject to revision, 
and restriction, in the same manner as are orig- 
inal applications for patents ; the Commissioner 
shall not add any such improvement to the patent 
in the one case, nor grant the reissue in the other 
case, until the applicant shall have entered a dis- 
claimer, or aliered his specification of claim in 
accordance with the decision of the Commis- 
sioner; and in all such cases, the applicant, if dis- 
satisfied with such decision, shall have the same 
remedy, and be entitled to the benefit of the same 
privileges and proceedings, as are provided by 
law in the case of original applications for patents. 
When, by Sec. 9. And be it further enacted, (anything 

mistake, Sc, .,„» , . „ , ,.,,.. 

m the niteenth sectjon oi the act, to which this is 



additional, to the contrary notwithstanding,) That 



any patentee 
claims to be 
the original 

part" of the whenever, by mistake, accident, or inadvertence, 
ed',"of ''which and without any Avilful default, or intent to defraud 
he^ was not, ^^ mislead the public, any patentee shall have in 
his specification claimed to be the original and 
first inventor or discoverer of any material or sub- 
stantial part of the thing patented, of which he 
was not the first and original inventor, and shall 
have no legal or just right to claim the same, in 
every such case the patent shall be deemed good 
and valid for so much of the invention or discov- 
Proviso. ery as shall be truly and bona fide his own : Pro- 



RELATING TO PATENTS, ETC. 297 

vided, It shall be a material and substantial part 
of the thing patented, and be definitively dis- 
tinguishable from the other parts so claimed with- 
out right as aforesaid. And every such patentee, 
his executors, administrators, and assigns, whether 
of a whole or of a sectional interest therein, shall 
be entitled to maintain a suit at law or in equity 
on such patent for any infringment of such part 
of the invention or discovery as shall be bona fide 
his own as aforesaid, notwithstanding the specifi- 
cation may embrace more than he shall have any 
legal right to claim. But in every such case in 
which a judgment or verdict shall be rendered for 
the plaintiff, he shall not be entitled to recover 
costs against the defendant, unless he shall have 
entered at the Patent Ofiice, prior to the com- 
mencement of the suit, a disclaimer to all that 
part of the thing patented which was so claimed 
without right : Provided, hoioever, That no per 
son bringing any such suit shall be entitled to the 
benefits of the provisions contained in this section, 
who shall have unreasonably neglected or delayed 
to enter at the Patent Office a disclaimer as afore- 
said. 

Sec. 10. And be it further enacted, That the Agents to be 
Commissioner is hereby authorized and empow- rr«'il"e^'' and 
ered to appoint agents in not exceeding twenty eirXc!™°'^" 
of the principal cities or towns in the United 
States, as may best accommodate the different 
sections of the country, for the purpose of receiv- 
ing and forwarding to the Patent Office all such 
models, specimens of ingredients, and manufac- 
tures, as shall be intended to be patented or de- 
posited therein, the transportation of the same to 
be chargeable to the patent fund. 



Further pro- 
viso. 



Jiya LAWS OF THE UNITED STATES 

Two exam- Sec. 11. And be it further enacted, That in- 

ining, and j r • • i i • i i i. i 

one copying Stead 01 one examining clerk, as provided, by the 
appointed, second Section of the act to which this is ad- 
ditional, there shall be appointed, in mariner there- 
in provided, two examining clerks, each to receive 
an annual salary of fifteen hundred dollars; and, 
also, an additional copying clerk, at an annual 
Temporary Salary of eight hundred dollars. And the Com- 
be^mpioyeth missioner is also authorized to employ, from time 
to time, as many temporary clerks as may be 
necessary to execute the copying and draughting 
required by the first section of this act, and to 
examine and compare the records with the orig- 
inals, who shall receive not exceeding seven cents 
for every page of one hundred words, and for 
drawings and comparison of records with orig- 
inals, such reasonable compensation as shall be 
agreed upon or prescribed by the Commissioner. 
Certificate Sec. 12. And be it further enacted, That 

of the Com- *' 

missioner to whenever the application of any foreigner for a 

be sufficient ^^ , . ,' , r 

warrant to patent shall be rejected and withdrawn for want 

the Treas- ^. , . / . . , 

urer. of novelty in the invention, pursuant to the 

seventh section of the act to which this is addi- 
tional, the certificate thereof of the Commis- 
sioner shall be a sufficient warrant to the Treas- 
urer to pay back to such applicant two thirds of 
the duty he shall have paid into the Treasury on 
account of such application. 
Affirmation Sec. 13. And be it further enacted, That in 

atUuted ^for all cases in which an oath is required by this act, 

an oath. ^^ j^y ^j^g ^^^^ ^^ which this is additional, if the 
person of whom it is required shall be conscien- 
tiously scrupulous of taking an oath, affirmation 
may be substituted therefor. 

paid int^the Sec. 14. And be it further enacted, That all 



RELATING TO PATENTS, ETC. 299 

moneys paid into the Treasury of the United *a?e'!i7&c"^ 
States for patents and for fees for conies fur- P"'"" i" pas- 

• ^ _ I sage of the 

mshed by the Superintendent of the Patent aci to wuir.h 

/ ^ . this IS adili- 

OfRce prior to the passage of the act of which tionai, to be 
this is additional, shall be carried to the credit of credit of pa- 

, r 1 1 1 • 1 11 '■^"' fundcre- 

the patent fund created by said act; and the ated by said 

. , „ 11111 11 acl; and said 

moneys constituting said fund shall be, and the fund appro- 
same are hereby, appropriated for the payment of saiLLs, &°^ 
the salaries of the officers and clerks provided by 
said act, and all other expenses of the Patent 
Office, including all the expenditures provided for 
by this act; and, also, for such other purposes as 
are, or may be hereafter, specially provided for by 
law. And the Commissioner is hereby author- . Commia- 

J sioner au- 

ized to draw upon said fund, from time to time, ^^horized to 

'^ draw upon 

for such sums as shall be necessary to carry into 'he. same, 

. • •' •' &c., and lay 

effect the provisions of this act, governed, how- before Con- 

, , , ,. . . , . . , gressannual- 

ever, by the several limitations herein contained, ly a state- 
And it shall be his duty to lay before Congress, in pendiiures, 

, 1 'f T 11 1-11 &c., and also 

the month of January, annually, a detailed state- a list of pa- 
ment of the expenditures and payments by him 
made from said fund. And it shall also be his duty 
to lay before Congress, in the month of January, 
annually, a list of all patents which shall have 
been granted during the preceding year, desig- 
nating, under proper heads, the subjects of such 
patents, and furnishing an alphabetical list of the 
patentees, with their places of residence ; and he 
shall also furnish a list of all patents which shall 
have become public property during the same 
period ; together with such other information of 
tlie state and condition of the Patent Office as 
may be useful to Congress or the public. 
Approved March 3d, 1837. 



300 



LAWS OF THE UNITED STATES 



■Act of July 
4, 1836, ch. 
357. 

Act of Aug. 
29, 1842, ch. 
263. 

Two assist- 
ant examin- 
ers to lie ap- 
pointed ; 
how ; their 
salaries. 



Temporary- 
clerks. 



List of pa- 
tents to be 
published. 



Pay for u 
of Tonms 
City Hall. 



CHAP. LXXXVIII. — An Act in addition to an " Act 
to promote the progress of the useful arts." * 

Section 1. Be it enacted by the Seriate and 
House of Representatives of the United States of 
America in Congress assembled, That there shall 
be appointed, in manner provided in the second 
section of the act to which this is additional, two 
assistant examiners, each to receive an annual 
salary of twelve hundred and fifty dollars. 

Sec. 2. Aiid be it further enacted, That the 
Commissioner be authorized to employ temporary 
clerks to do any necessary transcribing, whenever 
the current business of the office requires it: 
Provided, hoioever. That instead of salary a com- 
pensation shall be allowed, at a rate not greater 
than is charged for copies now furnished by the 
office. 

Sec. 3. And be it further enacted. That the 
Commissioner is hereby ^authorized fo publish a 
classified and alphabetical list of all patents 
granted by the Patent Office previous to said pub- 
lication, and retain one hundred copies for the 
Patent Office, and nine hundred copies to be 
deposited in the library of Congress, for such dis- 
tribution as may be hereafter directed ; and that 
one thousand dollars, if necessary, be appro- 
priated, out of the patent fund, to defray the 
expense of the same. 

Sec. 4. And be it further enacted, That the 
sum of three thousand six hundred and fifty-nine 
dollars and twenty-two cents be, and is hereby, 
appropriated from the patent fund, to pay for the 
use and occupation of rooms in the City Hall by 
the Patent Office. 



RELATING TO PATENTS, ETC. 301 

Sec. 5, And be it further enacted, That the Purchase of 
sum of one thousand dollars be appropriated from 
the patent fund, to be expended under the direc- 
tion of the Commissioner, for the purchase of 
necessary books for the library of the Patent 
Office. 

Sec. 6. And he it further enacted, That no no ptsou 
person shall be debarred from receiving a patent 



to be debar- 
d front) re- 
pa- 



act approved on the fourth day of July, one 
thousand eight hundred and thirty-six, to which 
this is additional, by reason of the same having 
been patented in a foreign country more than six 
months prior to his application : Provided, That proviso, 
the same shall not have been introduced into 
public and common use in the United States 
prior to the application for such patent : And Proviso. 
provided, also, That in all cases every such 
patent shall be limited to the term of fourteen 
years, from the date or publication of such for- 
eign letters-patent. 

Sec 7. And he it further enacted, That every Persons, 
person or corporation who has, or shall have, pur- purchased "r 
chased or constructed any newly invented any^"""n"w1y 
machine, manufacture, or composition of matter, Xae'^&c"*' 
prior to the application by the inventor or dis- 
coverer for a patent, shall be held to possess the 
right to use, and vend to others to be used, the 
specific machine, manufacture, or composition of 
matter, so made or purchased, without liability 
therefor to the inventor, or any other person 
interested in such invention ; and no patent shall 
be held to be invalid by reason of such purchase, 
sale, or use, prior to the application for a patent 
as aforesaid, except on proof of abandonment of 
such invention to the public, or that such pur- 
26 



302 LAWS OF THE UNITED STATES 

chase, sale, or prior use, has been for more than 
two years prior to such application for a patent. 
So much of Sec. 8. And he it further enacted. That so 
July 4, 1V32, much of the eleventh section of the above recited 
req^uiresp'ay^ act as requires the payment of three dollars to 
co^rdmg"^ as- t^e Commissioner of Patents for recording any 
repealed!''' assignment, grant, or conveyances of the whole 
or any part of the interest or right under any 
patent, be, and the same is hereby, repealed ; and 
all such assignments, grants, and conveyance, 
shall, in future, be recorded without any charge 
whatever. 
Agricultural Sec. 9. And he it further enacted, That a 
&,c. sum 01 money, not exceeding one thousand 

dollars, be, and the same is hereby, appropriated 
out of the patent fund, to be expended by the 
Commissioner of Patents in the collection of 
agricultural statistics, and for other agricultural 
purposes ; for which the said Commissioner shall 
account in his next annual report. 
Provisions Sec. 10. And he it further enacted. That the 
July 4, is36, provisions of the 16th section of the before 
tended. ' Tocited act shall extend to all cases where patents 
are refused for any reason whatever, either by 
the Commissioner of Patents or by the Chief 
Justice of the District of Columbia, upon 
appeals from the decision of said Commissioner, 
as well as where the same shall have been 
refused on account of, or by reason of, interfer- 
ence with a previously existing patent ; and in all 
cases where there is no opposing party, a copy 
of the bill shall be served upon the Commissioner 
of Patents, when the whole of the expenses of 
the proceedings shall be paid by the applicant, 
whether the final decision shall be in his favor or 
otherwise. 



EELATING TO PATENTS, ETC. 303 

Sec. 11. Avd he it further enacted. That in Appeals, 
cases where an appeal is now allowed by law 
from the decision of the Commissioner of Patents 
to a Board of Examiners provided for in the 
seventh section of the act to which this is addi- 
tional, the party, instead thereof, shall have a 
right to appeal to the Chief Justice of the Dis- 
trict Court of the United States for the District 
of Columbia, by giving notice thereof to the 
Commissioner, and filing in the Patent Office, 
within such time as the Commissioner shall 
appoint, his reasons of appeal, specifically set 
forth in writing, and also paying into the Patent 
Office, to the credit of the patent fund, the sum of 
twenty-five dollars. And it shall be the duty of 
said Chief Justice, on petition, to hear and deter- 
mine all such appeals, and to revise such decisions 
in a summary way, on the evidence produced 
before the Commissioner, at such early and con- 
venient time as he may appoint, first notifying the 
Commissioner of the time and place of hearing, 
whose duty it shall be to give notice thereof to 
all parties who appear to be interested therein, 
in such manner as said judge shall prescribe. 
The Commissioner shall also lay before the said 
judge all the original papers and evidence in the 
case, together with the grounds of his decision, 
fully set forth in writing, touching all the points 
involved by the reasons of appeal, to which the 
revision shall be confined. And at the request 
of any party interested, or at the desire of the 
judge, the Commissioner and the examiners in 
the Patent Office may be examined under oath, 
in explanation of the principles of the machine, 
or other thing for which a patent, in such case, is 
prayed for. And it shall be the duty of the said 



W€- LAWS OF THE UNITED STATES 

judge, after a hearing of any such case, to return, 
all the papers to the Commissioner, with a cer- 
tificate of his proceedings and decision, which 
shall be entered of record in the Patent Office ; 
and such decision, so certified, shall govern the 
further proceedings of the Commissioner in such 
Proviso, case : Provided, however, That no opinion or 
decision of the judge in any such case shall pre- 
clude any person interested in favor or against 
the validity of any patent which has been, or 
may hereafter be, granted, from the right to con- 
test the same in any judicial court, in any action 
in which its validity may come in question. 
Cornmis- Sec. 12. And be it further enacted, That the 
make regii- Commissioner of Patents shall have power to 
speciingcon- make all such regulations, in respect to the taking 
of evidence to be used in contested cases before 
him, as may be just and reasonable. And so 
much of the act to which this is additional as 
provides for a Board of Examiners is hereby re- 
pealed. 
Compensa- Sec. 13. And he it further enacted, That there 

tion of Chief , . , ,, ^ , r i i 

Justice. be paid annually, out oi the patent lund, to the 
said Chief Justice, in consideration of the duties 
herein imposed, the sum of one hundred dollars. 
Ap-promd March 3, 1839. 



\ 



CHAP. CCLXIII. — An Act in addition to an act to pro- 
mole the progress of the useful arts, and to repeal all acts 
and parts of acts heretofore made for that purpose. 
Act of July jge it enacted hy the Senate and House of Rep- 
357. ' resentaiives of the United States of America, in 
3, 1837, ch! Congress assembled. That the Treasurer of the 

Act of Mar. United States be, and he hereby is, authorized to 
3, 1839, ch. , , » 1 ^ J 

87. pay back, out of the patent lund, any sum or 

authoriz^eVto sums of money, to any person who shall have 



RELATING TO PATENTS, ETC. 305 

paid the same into the Treasury, or to any re- pay back.oui 

■t^ J ^ J of ihe patent 

ceiver or depository to the credit of the Treasurer, funf*. ceruin 

•^ mone> paiu 

as for fees accruing at the Patent Office through as feea. 
mistake, and which are not provided to be paid 
by existing laws, certificate thereof being made to 
said Treasurer by the Commissioner of Patents. 

Sec. 2. And be it further enacted. That the ge,.. 3 act 
third section of the act of March, eighteen hun- "ss/' Yh.'^J' 
dred and thirty-seven, which authorizes the re- ^xiended 10 

•I ' patents 

newing of patents lost prior to the fifteenth of f^^^^gf^ dIc"^ 
December, eighteen hundred and thirty-six, is i836, though 

° . •' lost subse- 

extended to patents granted prior to said fifteenth quentiy. 
day of December, though they may have been lost 
subsequently : Provided, however. The same shall Proviso. 
not have been recorded anew under the provisions 
of said act. 

Sec. 3. And he it further enacted, That any citizens, 
citizen or citizens, or alien or aliens, having re- ia?na'paient; 
sided one year in the United States, and taken ^°^' 
the oath of his or their intention to become a citi- 
zen or citizens, who by his, her, or their own 
industry, genius, efforts, and expense, may have 
invented or produced any new and original design 
for a manufacture, whether of metal or other 
material or materials, or any new and original 
design for the printing of woollen, silk, cotton, or 
other fabrics, or any new and original design for 
a bust, statue, or has relief or composition in alto 
or basso relievo, or any new and original impres- 
sion or ornament, or to be placed on any article 
of manufacture, the same being formed in marble 
or other material, or any new and useful pattern, 
or print, or picture, to be either worked into or 
worked on, or printed or painted, or cast, or other- 
wise fixed on, any article of manufacture, or any 
new and original shape or configuration of any 
26* 



tiUb LAWS OF THE UNITED STATES 

article of manufacture not known or used by 
others before his, her, or their invention or pro- 
duction thereof, and prior to the time of his, her, 
or their application for a patent therefor, and who 
shall desire to obtain an exclusive property or 
right therein to make, use, and sell and vend the 
same, or copies of the same, to others, by them to 
be made, used and sold, may make application, 
in writing, to the Commissioner of Patents, ex- 
pressing such desire, and the Commissioner, on 
due proceeding had, may grant a patent therefor, 
as in the case now of application for a patent : 
Proviso. Provided, That the fee, in such cases, which by 
the now existing laws would be required of the 
particular applicant, shall be one half the sum, 
and that the duration of said patent shall be seven 
years, and that all the regulations and provisions 
which now apply to the obtaining or protection of 
patents, not inconsistent with the provisions of this 
act, shall apply to applications under this section. 
Oath may Sec. 4. And he it further enacted, That the 
fore u. s! oath required for applicants for patents may be 
&c" ^ ^ ^' taken, when the applicant is not, for the time 
being, residing in the United States, before any 
minister plenipotentiary, charge d'affaires, consul, 
or commercial agent holding commission under 
the government of the United States, or before 
any notary public of the foreign country in which 
such applicant may be. 
Penalty for Sec. 5. And be it further enacted. That if any 

infringing i „ • ■ ,; 

the rights of person or persons shall paint or pnnt, or mould, 

a patentee, , , . 

&c.,bymark- cast, carve, or engrave, or stamp, upon anythmg 

'"^' made, used, or sold by him, for the sole making 

or selling which he hath not, or shall not have, 

obtained letters-patent, the name, or any imitation 

of the name, of any other person who hath or 



RELATING TO PATENTS, ETC. 307 

shall have obtained letters-patent for the sole 
making and vending of such thing, without con- 
sent of such patentee, or his assigns or legal rep- 
resentatives ; or if any person, upon any such 
thing not having been purchased from the paten- 
tee, or some person who purchased it from or 
under such patentee, or not having the license or 
consent of such patentee, or his assigns or legal 
representatives, shall write, paint, print, mould, 
cast, carve, engrave, stamp, or otherwise make or 
affix the word " patent," or the words " letters- 
patent," or the word " patentee," or any word or 
words of like kind, meaning, or import, with the 
view or intent of imitating or counterfeiting the 
stamp, mark, or other device, of the patentee, or 
shall affix the same, or any word, stamp, or device 
of like import, on any unpatented article, for the 
purpose of deceiving the public, he, she, or they, 
so offending, shall be liable for such ofTence to a 
penalty of not less than one hundred dollars, with 
costs, to be recovered by action in any of the cir- How recor- 
cuit courts of the United States, or in any of the ' 

district courts of the United States having the 
powers and jurisdiction of a circuit court ; one 
half of which penalty, as recovered, shall be paid 
to the patent fund, and the other half to any per- 
son or persons who shall sue for the same. 

Sec. 6. And he it further enacted, That all Patentees, 

, . ,. t r A;c., required 

patentees and assignees of patents hereafter grant- to mark ar- 

j , , . , tides offered 

ed are hereby required to stamp, engrave, or cause for sale. 

to be stamped or engraved, on each article vended 

or offered for sale, the date of the patent ; and if 

any person or persons, patentees or assignees, 

shall neglect to do so, he, she or they, shall be 

liable to the same penalty, to be recovered and negiect!^^ ^^ 



^A 



308 LAWS OF THE UNITED STATES 

disposed of in the manner specified in the fore- 
going fifth section of this act. 
Approved^ August 29, 1842. 



CHAP. XLVII.— An Act to provide additional examiners 
ia the Patent Office, and for other purposes. 

May 28,1848. Be it enacted by the Senate and House of Repre- 
sentatives of the United States of America in Con- 
gress assembled, That there shall be appointed, in 
the manner provided in the second section of the 
act entitled "An Act to promote the progress of 
useful arts, and to repeal all acts and parts of acts 
heretofore made for that purpose," approved July 

1836 ch. 3sr. fourth, eighteen hundred and thirty-six, tw^o prin- 
Additionai ^'P^^ examiners, and two assistant examiners, in 

examiners in addition to the number of examiners now em- 

iha Patent 

Office. ployed in the Patent Office; and that hereafter 

each of the principal examiners employed in the 
Patent Office shall receive an annual salary of 
aanes. twenty-five hundred dollars, and each of the as- 
sistant examiners an annual salary of fifteen 
hundred dollars : Provided, that the power to 

ofp^ienis'.°" extend patents, now vested in the board com- 
posed of the Secretary of State, Commissioner of 
Patents, and Solicitor of the Treasury, by the 
eighteenth section of the act approved July fourth, 
eighteen hundred and thirty-six, respecting the 
Patent Office, shall hereafter be vested solely in 
the Commissioner of Patents; and when an appli- 
cation is made to him for the extension of a patent 
according to said eighteenth section, and sixty 
days' notice given thereof, he shall refer the case 
to the principal examiner having charge of the 
class of inventions to which said case belongs, who 
shall make a full report to said Commissioner of 
the said case, and particularly whether the in- 



EELATING TO PATENTS, ETC. 309 

vention or improvement secured in the patent was 
new and patentable when patented ; and thereupon 
the said Commissioner shall grant or refuse the 
extension of said patent, upon the same principles 
and rules that have governed said board ; but no 
patent shall be extended for a longer term than 
seven years. 

Sec. 2. And be it further enacted, That here- Fees for re- 
after the Commissioner of Patents shall require a veyances of 
fee of one dollar for recording any assignment, ^^ ^^^^' 
grant or conveyance, of the whole or any part of 
the interest in letters-patent, or power of attorney, 
or license to make or use the things patented, 
when such instrument shall not exceed three 
hundred words; the sum of two dollars when it 
shall exceed three hundred and shall not exceed 
one thousand words ; and the sum of three dollars 
when it shall exceed one thousand words ; which 
fees shall in all cases be paid in advance. 

Sec. 3. And be it further enacted, That there Two copy- 
shall be appointed in manner aforesaid two clerks, co'rding 

^ , 11- • J J- J • clerks autho- 

to be employed in copymg and recordmg, and m rized. 
other services in the Patent Office, who shall be 
paid a salary of one thousand two hundred dollars 
per annum. 

Sec. 4. And be it further enacted. That the yj^^}}^^f 
Commissioner of Patents is hereby authorized to Co 
send by mail, free of postage, the annual reports 
of the Patent Office, in the same manner in which 
he is empowered to send letters and packages 
relating to the business of the Patent Office. 

Approved May 27, 1848. 



privilese of 



INDEX. 



A. 

ABANDONMENT OF EXPERIMENTS (See Experiments.) 
ABANDONMENT OF INVENTION, Page 

Destroys right to a patent 24 

ought to be clearly proved 24 

how shown on the pan of the patentee 24,25,26 

by acquiescence in public use or sale 146 

not by making for experiment 147 

conclusive evidence of 147 

no length of time required to prove 147 

hove far the intention is material 14S, 149 

not by experimental practice by the inventor 150 

not by piratical user . . • 150, 151 

modifications of, by statute of 1S39 .... 152—154, 206, 301 

a good defence to an action for infringement 145, 146 

a good defence to a bill in equity 173 

ACCIDENT, 

may lead to invention or discovery 8 

ACCOUNT OF PROFITS, 

when ordered in lieu of granting an injunction . . • . .171 

upon what principle granted 171 

extends to all the articles made 172 

ACTION AT LAW, 

a remedy for infringement 129 

in whose name to be brought, 129 

of grantee for particular district 129 

of assignee J29 

of assignee and patentee 129 

of patentee • . . 129 

may be maintained against corporations 130 

declaration in (See Declaration) 130—132 

pleadings and defences in 132—156 

statute provisions concerning 132 — 134, 234 

defendant may plead general issue 132, 2^4 

defendant may plead specially 134 

defences under general issue without notice .... 134, 135 
that defendant never did the act complained of . . .134 
that plaintiff was not entitled to a patent .... 134 



312 INDEX. 

ACTION AT LAW, Continued. 

that plaintiff has not a good title as assignee .... 134 

that the patent was not duly issued 135 

that the invention was not a patentable subject . . . 135 

want of utility in the invention 135 

want of an intelligible specification 135 

defences under the general issue requiring notice .... 135 

the statute itself 136 

concealment or addition in specifications • . . 136 — 156 

want of novelty in subject-mailer 13S— 145 

prior dedication of the invention to the public . . 145— 1J4 
that the patent was obtained surrepliliously . . . 154, lb5 
that the invention was unreasonably withheld from the 

public 156 

not a complete remedy in all cases 157 

ADDITIONS, 

to patents, how made 86, 283, 294, 296 

ADMINISTRATORS AND EXECUTORS, 

when may lake out patent 50, 206, 230 

may apply for extension 51 

may amend specifications . . . 80, 86, 83 

AFFIDAVIT, 

in support of motion for injunction 160,161 

when read in support of lille 174 

AFFIRMATION, (See Oath,) 

when substituted for an oath • 298 

AGENTS, 

may transact business with Patent 0£Bce 219 

authorized to forward models 215, 216, 297 

AGRICULTURAL STATISTICS, 

to be collected by Commissioner 302 

ALIENS, 

may take out patent in United States .... 50,51,206,305 

may file caveat . 82, 236, 281 

ALTERATION OF SPECIFICATIONS (See Amendments.) 
AMBIGUITY, 

effect of, in specifications 59 

different kinds of 59—72 

AMiENDMENTS, 

of specifications allowed by statute 79—81,218,232 

by disclaimer 80, 88, 140, 226, 295 

ANALOGOUS USE, 

not subject of a patent 36,37 

APPEALS, 

to Supreme Court, when allowed 201,287 

from decision of the Commissioner . . . 219,221—223,227,303 
APPLICANT FOR PATENT, 

rules to be observed by 209, 210 

who may be, under the statute 50, 51, 207 

to make oath 83, 213, 214, 275 

to pay money into the treasury -84, 210, 279, 280 



mm±. 313 

APPLICATION FOR PATENT, 

to be made in writing .83, 211, 274 

to be by petition 83, 211, 274 

lo be accompanied with specificationa 55, 208, 275 

form of 211 

■when re-considered 219 

may be withdrawn 220, 277 

proceedings in case of interfering 223,278,279 

ARTS, USEFUL, 

when subject of a patent 7,39,40,205 

fine arts not patentable 39 

ASSIGxNEES OF A PATENT, 

when may talte out patent 206 

rights of, in case of extension 52,95,96,130 

in case of renewal 87, 96, 130 

when a party to a suit, for infringement ... 81, 95, 96, 129, 297 

when may amend specifications 80, 86, 88 

may bring a bill for an injunction 158, 297 

in banltruptcy 93, 94 

ASSIGNMENT OF PATENT, 

allowed at common law 93 

does not ordinarily include a right to the extension . . 52, 96, 130 

bow made according to statute 93,241,280 

may be made before patent is taken out 93,241,295 

when by operation of law 93,94 

when to be recorded . . 95,241,231 

how affected in case of surrender by patentee 95,96 

distinguished from a license 96 — 99 

when to be recorded anew 241,290 

forms of 242, 243 

ASSISTANT EXAMINERS, 

to be appointed in Patent Office 300, 308 

ATTORNEY (See Agents.) 

B. 

BANKRUPTCY, 

of patentee, vests patent in his assignees 93, 94 

BAS RELIEFS, 

designs for, patentable 206, 233, 305 

BILL IN EQUITY, 

what it should contain , . 159 

when brought upon title of an assignee 160 

should be sworn to • 160 

how affected by subsequent renewal of patent 160, 161 

BUSTS, 

designs for, patentable 206, 233, 305 

c. 

CAVEAT, 

when allowed by statute 82, 236, 281 

to be filed in confidential archives of Patent Office . . 82,237,281 

may be filed by an alien, when 82, 236, 281 

cannot be filed by foreigners 237 

27 



314 INDEX. 

CAVEAT, Continued. 

rules conceraing ZST, 233 

form of 233 

CHANCERY (See EauiTV.) 

CHANGE, 

of former proportions of a machine, not patentable .... 7 

when unimportant 9 

materiality of, how determined . . 9 — 13 

utility of, a test of invention • ,9,10,13 

by omitting a usual ingredient 34 

CHIEF CLERK OF PATENT OFFICE, 

how appointed 272 

his duties and salary 272 

CHIEF JUSTICE, 

to hear appeals in certain cases 221, 303 

his compensation therelbr 304 

CIRCUIT COURT, 

have cognizance of patent causes 200,201,286 

jurisdiction of, exclusive 201 

appeal from, lies to Supreme Court 201, 237 

CLASSIFICATION OF IMODELS, 

to he made by Commissioner 289 

CLERKS OF COURTS, 

wlien to transmit copies of patents 291 

CLERKS OF PATENT OFFICE, 

to be appointed by tiie Commissioner . . . .272,298,300,309 

COLORABLE VARIATIONS, 

not subject of a patent 9 

COMBINATION, 

a new, when subject of a patent 16,30,41,43 

COMMISSIONER OF PATEN PS, 

application to be made to 83,209,211,275 

to sign patent 85, 274 

When may correct mistakes 85, 228 

" acting commissioner," recognized by law 85 

opinion of, when not reexaminable 87, 217, 218 

to decide whether an extension shall be granted . . .89, 231, 308 

to be appointed by the President 271 

, general duties of 271, 272- 

compensation allowed to 272 

to make oath before entering on his duties 273 

to give bonds, with sureties 273 

to make examination of inventions 207,276 

duty of, in case of interfering applications .... 223,278,279 

to make classification of models, 289 

authorized to draw money from patent fund 299 

to make an annual statement of expenditures, &c 299 

to make an anniiallist of patents 299 

all correspondence addressed to 219, 243 

COMPOSITION OF MATTER, 

when the subject of a patent 7,44,45,205 



INDEX. 315 

COMPOSITION OF MATTER, Continued. 

includes what 44 

lest of novelty in 44,45 

patent for, how infringed 103 — 110 

CONCEALMENT, 

when il vitiates specifications 72, 75, 132, 137 

CONGRESS, 

may pass general or special laws in favor of inventors . . . 200, 253 
may pass retrospective laws 200 

CONSTRUCTION, 

of patent, determined by the court 57,59,60,63,71 

judged of by the jury 57,63,73 

to be liberal 58 

principles of, which guide the court 61,191—199 

COPY, 

constitutes an infringement 105,111 

of patent, mistakes in, how corrected 85 

of records, &c., under seal, when to be evidence .... 273,291 
of patents, descriptions. Sec, when to be sent to Commissioner by 
clerks of courts - . . , . 291 

CORPORATION, 

may be sued for infringement 130 

COSTS, 

when awarded by discretion of court . 139 

when not allowed the plaintiff 81,141,145,297 

COUNSEL FEES, 

when allowed to the plaintiff 128 

COURT, 

province of, to construe patents 57,59,60,63,71 

questions of law to be determined by 189 — 199 

what constitutes novelty 189 

what constitutes sufBciency of invention 189 

whether the patent is void, as being against public policy . . 190 

whether the invention is frivolous 191 

extent of the claim in specifications 191 

principles which guide, in construing specifications . . 61,191 — 199 

how far may receive evidence of invention 194 

to decide what the specification has said 197 

to decide whether the invention is patentable 198 

COURT OF EQUITY, (See EauiTT,) 

may restrain infringements by injunctions 157 

ground of jurisdiction of 157 

discretion vested in 157, 158 

DAMAGES, ^* 

rule of, for infringement 126, 127 

actual, what is meant by 127 

may be trebled by the court 127, 283 

■when merely nominal 127 

when may include counsel fees and expenses of witnesses , . . 128 
allowed for infringement after the destruction of Patent Office . . 128 
how recovered . 283 



SIS INDEX. 

DEATH, 

of inventors, before taking out patent 280 

DECLARATION, 

what it should set forth, in an action at law 130 

that plaintiff was first inventor 130 

that the subject-matter was new and useful 131 

whether the citizenship of patentee 131 

that patent was obtained in due form of law 131 

the substance of the grant 131 

the value of the patent 131 

the breach by defendant 131 

damages sustained by the plaintiff 131 

when the plaintiff sues as assignee 131 

omission in, when cured by a verdict ....... 132 

DEDICATION (See Abandonment of Invention.) 

DEFENCES, (See Action at Law, Eauiir,) 

to actions at law 132 — 156 

to a hill in equity 173 

DEPARTMENT OF STATE, 

Patent Office attached to 271 

DESCRIPTION, 

of a machine, may be part in writing, and part by drawings . . 78 

prior, in a public work, invalidates a patent 26,138 

what constitutes such description 143, 144 

DESIGNS, 

when the subject of a patent 45,206,233,305 

include tradesmen's marks 45, 46 

DISCLAIMER, 

when allowed by statute 80, 88, 140, 226, 295 

by whom made 80, 88, 140, 226, 295 

to be recorded in the Patent Office 80, 140, 227, 295 

to be taken as part of the specifications .... 80,140,227,295 

how to affect an action pending SO, 140, 295 

effect ofas to costs 81,141,297 

form of 227 

DISTRICT COURT, 

when it has cognizance of patent causes 201,286 

DOUBLE USE (See Analogous Use.) 

DRAWINGS, 

to accompany specifications 56, 78, 209, 214, 275 

form a part of specifications 56,78,295 

whether to be drawn on a scale 79, 214 

attestation of, required by statute 79, 214 

duplicates of, when to be furnished 214, 294 

DUPLICATES, 

of models and drawings, when required 214,215,294 

EFFECT, 

in the abstract, not patentable 8, 17, 31 

EQUITY, 

court of, may restrain infringements by injunctions .... 157 



317 



EQUTTT, Continued. 

grounds of jurisdiction of , . 157 

general principles of, to regulate the granting of injunctions . 157, 153 

parlies entitled to relief in 153 

same in general as in actions of law 153 

distinction in case of assignment for a particular district . . 159 

bill in, what it should contain 159 

should be sworn to 160 

how affected by a subsequent renewal of patent . . . 160,161 

injunctions, on what principles granted 161 

application for, to be accompanied with an affidavit . . 161,174 

notice to be served on the defendant 161,174 

not granted on e:r/)a;-Ze applications 162 

when patentee must first establish his right by action at law . 162 

rule adopLed by our courts 162 

three classes of cases under 163 

when no opposing evidence is offered 1G3, 164 

when opposing evidence is offered . . , , . 163— 16S 

when there is a full hearing 163,166,167 

prima facie right to, when made out .... 164, 169, 174 

when not granted simpliciter, what course must be taken . . 167 
■when patent must be established without injunction . . 167, 163 
when patent must be established afier injunction . . . 167, 163 
when the answer denies the validity of the patent . . . 169 
when an action is pending against another party .... 169 

practice of the court, in dissolving, reviving, &c 169 

motion to dissolve, when may be made 169 

after trial has been ordered 169 

while an action is pending 169 

while plaintiff is preparing to bring an action . . . . 170 

after trial has been had 170 

motion for, when to stand over 170 

in case of an application for a new trial .... 170,171 
granted as matter of course, after a judgment for plaintiff , . 171 

account of profits ordered in lieu of 171 

when not dissolved on account of doubts of the validity of the 

patent 172 

when granted against one who has used the invention by per- 
mission 172 

a good defence in a bill for 173 

are always special 174 

when applied for before the answer is filed 174 

remedy in, in case of interfering patents 222,223 

EVIDENCE, (Ske Action at Law,) 

what may be given in, under the plea of general issue .... 132 

two kinds of, in a patent cause 175 

of titles, relate to what 175 

of infringement 175 

competent, to show the granting of the patent 175 

primd facie, o[ novelty 175 

negative, when to be offered by the plaintiff 176 

27# 



3^1^ INDEX. 

EVIDENCE, Continued. 

effect of negative evidence, offered by plaintiff 176,177 

of novelty, when patentee's own declarations 177,178 

of utility, to be offered by plaintiff 178 

of sufficiency of specifications 178 

nature of such evidence 179,180 

who may give, as experts 180—184 

nature and scope of, to explain specifications 184 

principles of, as applied to the question of identity .... 184,185 

two kinds of, applicable to this question 183 

of experts, for what purpose admissible 18S 

sufficiency of, how far determined by the court 186, 187 

positive, when offered by defendant 187 

copies of records, when to be 273,291 

rules for taking and transmitting 223 — 225 

EXAMINING CLERKS, 

to be appointed by the Commissioner 298 

compensation allowed to 293 

EXECUTORS, (See Administrators and Executors.) 

EXPERIMENTS, 

unsuccessful, do not prevent subsequent inventor from obtaining 

a patent 20, 176, 177 

distinguished from invention 20, 21 

antecedent, by others, may be used by inventor 23 

EXPERTS, 

testimony of, when resorted to 57 

who may be reganled such 73, 74, 179 — 184 

persons of ordinary skill 181 

depends upiin the nature of the subject-matter .... 180,182 
when thoroughly scientific persons 181, 132 

EXTENSION OF PATENT, 

allowed by statute 51,88,230,287 

administrauir may apply for 51 

right to grant, vested in the Commissioner . . . . .89, 231, 308 
how far enures to the benefit of assignees .... 52,96,130,231 

application for, to whom referred 231, 308 

cannot be for a longer time than seven years 231,309 

suggestio[is to those applying for 231 — 233 

F. 

FEES AT PATENT OFFICE, 

how to be paid 243— 24G 

amounts required 244 

a new, when required 218 

when to be returned in part 220 

FIRST INVENTOR, 

alone, entitled to a patent 33, 50 

meaning of, in our statute 18,19 

the expression, how construed in England 18, 19 

in a race of diligence, when entitled to patent 20 

how far may take suggestions from others 21, 22 

may use antecedent experiments 20 — 23 

patenteemust believe himself to be 26 



W^^^- 319 



FOREIGN'ER, (See Alien.) 

FOREIGN INVENTION, 

inirnduciion of, not patentatle 50 

FOREIGN PATENT, 

whea does not prevent a patent in the United States . . 50, 51, 279, 301 

FORMS, 

prescribed by law, not varied 205 

of specifications 212,213,235 

of petitions 211,234 

of oaths 214 

of withdrawal of application 220 

of addition of new improvements 226 

of disclaimer 227 

of surrender for new patent 229 

of magistrate's certificate of evidence 224 

G. 

GENERAL ISSUE, (See Action at Lav?,) 

may be pleaded, in an action for infringement 132, 284 

defences under, without notice 134, 135 

requiring notice 136 — 156 

GRANTEE, (See Assignee,) 

for particular district, may bring an action in his own name . . .129 

I. 

IDENTITY, 

involved in an infringement Ill 

what is, in machinery 111—113 

in a manufacture 113—115 

in the application of a principle 115—117 

IMPROVEMENT, 

a lest of novelty 10 

when it shows sufficiency of invention 14—16 

the subject-mailer of a patent 35,41—43,205 

several, may be protected by one patent 41 

what is, as applied to machinery 41, 42 

sufficient to sustain a patent, how tested 43 

patent fnr, how made serviceable 42 

description of, in specifications, how made 65 

additional, when made to specification 225, 2S3 

form for addition of 226 

INFRINGEMENT, 

none, where there is real improvement 14—16 

by carrying the same principles into effect 32,111,112 

what is 64, 105 

not defined by statute 105 

different modes of 106 

by making patented machine for use 106 

by using it 106 

by selling it 106 

whether by making for experiment 106, 107 

by constructive user 107, 108 

not by selling materials of a machine . , 103 



320 INDEX. 

INFRINGEMENT, Continued, 

not by selling the arucles produced by it 109 

by consiimpiion of a composilioQ 109,110 

when, by making lo order 110 

by practising an art 110 

the great question concerning 110 

involves substanlialidentity Ill 

by a machine which incorporates the substance of the inventioQ . Ill, 112 

not where tliere is a mHlerial alieration 112 

when ihe change constitutes a mechanical equivalent . , .112,113 

of a manufacture 113 

when not shown by similarity of structure 113 

mode of proving 113,114 

burden of proof, on plaintiff 114 

when the subji-ct-matier is the application of a principle . . .114 — 117 

none, where there is a substantive invention 117,113 

how tested 117—121 

none, where there is a change of ingredients 121 — 123 

utility, when a lest of 123—126 

related to what is ci^vered by the patent 124 

when subject-matter is a combination 124 

when patent is for improvements 124, 125 

damages allowed for 126—123, 283 

none, before the patent is obtained 123 

remedy for, by action at law 129 

may be restrained by injunctions 157 

by marking, penalty for 306 

INJUNCTION, (See EauiTv,) 

granted by the court, to restrain infringements 157 

bill for, what it should contain 159, 160 

on wliat principles granted 161 

application for, how made 161 

not granted on ar parte applications 162 

rule for granting, before trial 162, 163 

three cases under 163 — 167 

primA facie right to 164, 169, 174 

granting of, rests in discretion of the court 157,166 

not granted, when irreparable mischief would ensue to defendant . . 166 
nor where pUintiiT his permitted defendant to incur expense . . .166 

notwithstanding defendant's admissions 166 

perpetual, only granted on full hearing 166, 167 

motion to dissolve, when may be made 169 

motion for, when to stand over 170 

when granted as matter of course , , . 171 

when granted against one using by permission 172 

perpetual, a good defence to 173 

is always special 174 

INSPECTION, 

of works, sometimes ordered by the court 172 

INTENTION, 

when material to show abandonment 149 



msfXj. 321 



INVENTION, 

sufficiency of, to support a patent 8 — 17 

distinguished frum new use 17 

must be beneficial to society . 17 

prior, destroys right to a patent 17 — 20 

prior, what constitutes 20 — 21 

how far may be suggested by others 21—23 

when abandoned, renders patent invalid 24 

must be absoluiely new 24—26 

foreign, when not to affect patent 26 

every material pan of, must be new 27 

a joint, when subject of a patent 49,207 

J. 

JURY, 

province of, in patent causes 57,53,63,189—199 

questions of fact, to be determined by 189 

whether patentee was the inventor 189 

novelty of subjeci-matier 189 

whether renewed patent is for the same invention as the old one . 189 

abandonment of the invention 189 

whether the means employed will be successful 190 

whether the specifications claim what is not new . . . 191—196 

the meaning of terms of art 191 

facts referred to as pan of the description 196,197 

sufficiency of the description 197, 193 

the question of identity '. . • . 199 

JUBia)ICTION, 

of Consress 200, 253 

of Circuit Court 201,286 

appellate, of Supreme Court of United States 201,287 

li. 

LAW AND FACT, (See Court, Jitry,) 

questions of 189—199 

LETTERS- PATENT, (See Patent.) 

LIBRARY, 

for the use ofthe Patent Office 289 

appropriations for 289, 301 

LICENSE, 

by operation of statute, before patent is obtained 25 

what amounts to, in such a case 23, 26 

distinguished from an assignment 96 — 99 

when assignable 99, 100 

how construed 100 — 102 

LICENSEE, 

his rights as against the patentee 96—102 

when may dispute validity of the patent 100 — 102 

must comply with the conditions ofthe license 101 — 102 

LIST OF PATENTS, 

to be made by Commissioner 299 



M, 

MACHINE, 

when the subject of a patent 7, 8, 40—43, 203 

novelty in, hdvv tested 8, 15, 16 

mere effect of, not patentable 8 

meaning of, in the statute 40 

jjnprovemenls of, when patentable 41 — 43 

distinguished from manufacture 43 

when two may be embraced in one patent 48, 49 

drawings of, to accompiny specifications 56 

materials of, when to be staled in specifications 78 

patent for, how infringed 105—103 

MACHINIST, 

to be appointed in Patent Office 272 

compensation allowed to 272 

MAILS, 

models, &c., not transmitted by 258 

MANUFACTURE, 

when the subject of a patent .7,43,44,205 

used in a literal and figurative sense 23,29 

includes what 29—30 

meaning of in our statute 43 — 44 

distinguished from a machine 43—44 

patent for, how infringed 113 — 115 

MARES, 

required to be put on patented articles for sale 239, 307 

penally for illegal 239,306,307 

MARKS OF TRADESMEN, 

the subject of patents 45,46 

MESSENGER, 

of Patent Office, how appointed 272 

his salary 272 

MISTAKES, 

in patent, how corrected 85, 228, 282 

MODE, (See Process,) 

of producing a thing, patentable 23 — 30 

MODELS, 

of invention, when to be furnished by patentee • . . 56,209,215,275 

to be classified by the Commissioner 289 

duplicates of, in certain cases to be procured 293 

compensation for, when allowed 294 

to be exhibited to the public 289 

how may be forwarded 215, 216, 297 

MONEY, (See Fee,) 

when to be paid into court 166, 173 

for patents, when to be relumed 277, 298, 304, 305 

carried to credit of patent fund 298,299 

gold and silver only used 220, 221, 212 

N. 

NEW PATENT, 

may be issued, on surrender of the old one . . . .86, 228, 229, 283 



323 



NEW PATENT, Continued, 

presumed to be for the same invention 87 

in place of those destroyed, when to be issued 292,303 

NOTICE, 

when to be served on the opposite party 132—134, 161 

to be construed strictly 134, 139 

i -TELTY, 

a statute requisite 7 

what is, in machinery 8, 15, 16 

wlial amount iifthouglu it implies 8,9 

implies more than a frivolous invention 9 

utility, a test of 9, 13 

prima /aci'e evidence of 175 

mode of proving 175—173 

two issues concerning 19 

how far consistent with suggestions by others 22,23 

inconsistent with prior public use or sale 23 

relates to other countries 26 

inconsistent with foreisn patent 26 

inconsistent with a prior description in a public work .... 26 

relates to the whole invention 27 

failure of, renders patent void 27, 133 

test of, in compositions of matter 41,45 

O. 

OATH, 

required of an applicant for patent 83,209,213,214,215 

priOT«/«c!e proof of novelty 84 

form of, when varied 50, 207 

irregularity in, how cured 81 

omission of, does not invalidate patent 84 

required of officers in Patent Office 273 

when affirmation may be substituted for 293 

before whom taken 213,276 

forms of 214,235,210 

when 10 be renewed 223, 277 

OFFICERS OF PATENT OFFICE, 

a commissioner 271 

a chief clerk 272 

two examining clerks 293 

two copying clerks 309 

two principal examiners 303 

four assistant examiners ...,», 300, 308 

a draughtsman 272 

a machinist 272 

a messenger 272 

two other permanent clerks 272 

temporary clerks 29?, 300 

disqualified from taking interest in patents 272, 273 

to make oath .273 

compensation allowed to 272, 298, 300, 30S, 309 



324 iiTOEX. 

ORNAMENTS, 

designs for, patentable 206, 233, 305 

P. 

PATENT, 

subject-matter of, (See Subject-matter,) ...... 28—47 

principles of law of 7,23 

copy of wiien used as evidence , . 175, 176 

wtiich of two applicants is entitled to 20 

should contain no more than is necessary 27 

design of law of 28,124 

construed with specifications 56—53 

cannot be more extensive than the invention 192 

may cover two machines 48, 49 

when to be joint 49, 207 

cannot cover distinct inventions 47,48 

cannot be both joint and several 49 

cannot be two, for same invention 49 

persons entitled to lake 50—52, 206 

foreign, when does not prevent a patent in United Slates 

51, 235, 236, 279, 301 

construction of, by the court 57, 59, 60, 63 

to be construed liberally 53, 61 

application for, how made 83, 207, 234, 274 

how to be issued S-"), 217, 274 

mistakes in, how corrected 85,228,232 

■when surrendered, and new one taken out . . . 86—68, 228, 229, 232 

time for which renewed patent is granted 87, 232 

how extended 83, 89, 230—233. 237 

how may be assigned 93,94,241,230 

for how long lime granted 105,239,274 

infringement of, (See Infringement,) 105 — 123 

consideration for granting 27, 125 

rendered invalid by fraud 125, 136 

effect of a failure of utility on 125,126 

damages for infringing 126—128 

when granted, relates back to the time of invention 123 

remeily for infringing, by action at law 129 

protected by injuMCiions 157 

to be signed by Secretary of State, and by Commissioner of Patents 85, 274 
additions thereto, when may be made by patentee . . .86, 225, 233 

interfering, remedy in case of 235, 236 

issued prior to 15ih December, 1836, may be recorded anew . 240, 241, 290 

list of patejits to be made annually 299 

lisl of patents to be published 300 

when may be dated back 279 

PATENTEE, 

who may he under the statute 50—52, 206 

may be an alien, when 51,206 

presumeil not to claim things in use 61, 195 

relations of, to a licensee, in regard to the validity of the patent . . 100 
to mark articles ofTered for sale 239,307 



325 



PATENT AGENTS, 

remarks concerning 246, 247 

PATENT OFFICK, 

aitached 10 Ihe department of State 271 

PENALTY, 

for infriniing rights of patentee by marking 308 

how recoverable 307 

PETITION, 

application for patent made by 83, 209, 274 

mii.si be signed by applicant 211 

PLEADINGS AND DEFENCES, (See Action at Law,) 

in actions at law 132—157 

PRESIDENT, 

to appoint Commissioner of Patents 271 

PRINCIPLE, 

of a machine, what is . . ; 8 

an abstract, not patentable 29, 31 

embodiment of pitentable 29—32 

when it becomes a process 29 

application of, what constitutes 36 — 38 

application of not always patentable 36 

PRINCIPAL EXAMINERS, 

two, to be appointed by Commissioner 308 

application for extension of patent to be referred to 308 

compensation allnwed to 303 

PRINTED PUBLICATION, (See Public Work.) 

PROCESS, 

when the subject of a patent 28—30 

PROFERT OF LETTERS-PATENT, 

to be made in the declaration 131 

in a bill for injunction 159 

PROOF, (?EE EviOENCE.) 

burden of, to show infringement, on plaintiflF 114 

PUBLIC USE, 

prior, destroys right to patent 23, 145, 146 

meaning of 23,146,147 

PUBLIC WORK, 

prior description in, inconsistent with novelty 26, 133 

what is 140, 141 

PURPOSE, 

in the abstract, not patentable . . . . > 17 

R. 

RECORDING OF ASSIGNMENT, 

proof of, when may be given in actions at law 132 

when may be anew ••.. 290 

REMEDY, (See Action at Law ; EatJiTY,) 

for infringement of patent 129 — 174 

RENEWAL, 

of patent, when allowed by statute 86—88, 228, 282 

REPUGNANCY, 

between specifications and patent • . • • 53 

28 



326 



REPORTS, 

to be submitted to Con^resa 249, 299 

to be sent by mail free by Commissioner 299 

RESULT, 

a test of invention 13,14 

RULES, 

of Patent Office, how modified 205 

RULE OF DAMAGES, (See Damages,) 

for infringement of patent 126—123 

S. 

SCIENCE, 

discoveries in, not patentable 31 

SEAL, 

for Patent Office, how provided 273 

SECRETARY OF STATE, 

to sign patents 85, 274 

SERVANT, 

suggestions by, when consistent with novelty . . . . 22,23 

manual dexterity of, may be used liy inventor 22, 23 

when the principle is suggested by 22 

SPECIFICATIONS, 

to be filed in Patent OlBce 209, 275 

statute requirements of 55,56,211,275 

must be construed with the patent 56 

drawings annexed to, a part of 56 

two objects of 59 

rules for preparing 59, 72 

must not be ambiguous 60 

must distinguish what is old from what is new 60 

to be liberally construed 61 

how to describe what is old Gl, 62 

to slate the best mode of producing an effect 62,63 

to be construed by the court 57, 59, 60, 63, 191 

how far to be judged of by the jury 57,63,73,191 

must not contain useless descriptions 63 

should describe everything essential 64,71,75 

must not misuse terms, 64, 65 

how to describe an improvement, 65, 66 

must disclose a patentable subject 67, 68 

how to descrilie the application of a principle 68 — 71 

how construed, when several things are described in . . . 71, 72 

must not mislead the public 72 

addressed to persons of competent skill , . 73,74,76,77,179—184 

may contain technical terms 73, 76, 77 

must not require experiments 74—76 

slight defects in, may render patent void 74 

■when to state how substances may be procured 75 

need not describe what 76 — 78 

when to slate rnaterials of a machine .... ... 78 

why to be accompanied with drawings 78, 79 

how attested . 79, 217 



327 



SPECIFICATIONS, Continued, 

amendments of, when allowed 79—81, 218, 282 

forms of 212, 213, 235 

STATUES, 

designs for, patentable 206, 233, 305 

SUBJECT MATTER, 

must be new and useful 7, 13, 14, 207 

when may be an art 7, 39, 40 

a machine 7,8,40-43,205 

a manufacture -7,43,44,205 

a composition of matter 7, 44, 45, 205 

an improvement 35, 41 — 43, 205 

cannot be mere theory 7, 23 

mere purpose or effect 8, 17, 31 

the application of what is old, to a new purpose . . 8,16,17,37 

not a frivolous invention 9,17 

when substitution may be 10 

when a new application of known agents . . . . 10,11,32—35 

when a new combination 16,30,41,45 

must be beneficial to society 13,17 

cannot be an inchoate idea 21 

an elementary principle 23,29,31,32 

a science 31 

when a process or application of a principle 32 — 38 

may be a new contrivance to effect an old object 37 

may be designs 45, 46, 206, 233 

must possess unity 47 — 49 

classification of, under the statute 38 — 46 

SUBSTITUTION, 

when the subject of a patent . . . , 12 

an obvious, not an invention 9 

SUFFICIENCY OF INVENTION, (See Invention ; Noveltt; Utility.) 

SUGGESTIONS, 

by others, when consistent with invention 21 — 23 

abstract, not patentable 21 

of possibility, not invention . 22 

ofa servant, effect of 22,23 

of principle, is invention 22 

in course of experiment, may be adapted by an inventor ... 23 

SUPREME COURT OF UNITED STATES, 

its appellate power, in patent causes 200, 201, 287 

SURRENDER, 

of patent, when may be made, and new one taken out 86— SS, 223, 229, 282 
form of, for reissue 229 

T. 

TEMPORARY BOARD OF COMMISSIONERS, 

when appointed 293 

theirduties 293 

TEMPORARY CLERKS, 

when may be appointed 298, 300 



328 INDEX. 

TERM, 

for which patent is granted . . . ■ . . . ' . . , 103, 274 
extension of, wiien graiited 88, 287, 288 

THEORY, 

in the abstract, not patentable 7 

THOUGHT, 

amount of, sufficient to constitute invention 8, 9 

TREASURER, 

to be credited with fees 244 

when to return money paid into the treasury . . . 277, 278, 304, 305 

U. 

UNITY, 

of subject-matter, required by statute 47 

in case of two distinct inventions 47 

how determined 48 

when consistent with combinations . ' 48 

in case of several improvements 48,49 

in case of a joint invention 49 

UTmiTY, 

a statute requisite 7 

when a test of invention 9,10,13,123 

meaning of, in American law 13,14,17 

degree of, not material 17 

relates to the whole invention 27 

failure of, its effects upon the patent 125, 126 

W. 

WITNESS, 

who are not incompetent on account of interest .... 187,188 

one who has used patented machine 187 

patentee of another patent, who sold the machine to defendant . 188 

patentee, who has assigned his whole interest 188 

a licensee, for the patent 1S8 

depositions of, how taken 183 

WHIT OF ERROR, 

lieslo the Supreme Court of United States 201,287 



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